`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________________
`
`CASE: IPR2022-00188
`U.S. PATENT NO. 10,469,934
`_____________________
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2022-00188
`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 ’934 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 .................................................... 17
`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 ...................................................................................... 18
`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 ............................................................................... 19
`
`4.
`
`5.
`
`ii
`
`

`

`
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`6.
`7.
`
`Factor 6: The Finite Resources of the Board ........................... 20
`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 .............. 20
`Holistic Review of General Plastic Factors ............................. 21
`8.
`IV. PETITIONER MISCHARACTERIZED THE BOARD’S
`REASONING AND LANGUAGE IN UNILOC .......................................... 21
`A.
`Petitioner Contorted a Criticism of Apple’s Serial Attacks in
`Uniloc into a Test for Evaluating the General Plastic Factors ........... 21
`Petitioner Altered the Board’s Quotes in Uniloc to Benefit
`Petitioner’s Flawed Arguments ........................................................... 24
`CONCLUSION .............................................................................................. 28
`
`B.
`
`V.
`
`
`
`
`
`
`
`
`iii
`
`

`

`
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Corephotonics Ltd.,
`IPR2018-01356, Paper 9 (PTAB Feb. 5, 2019) ............................................ 18, 19
`Apple Inc. v. Koss Corp.,
`IPR2021-00592, Paper 9 (PTAB Aug. 23, 2021) ........................................passim
`Apple Inc. v. Koss Corp.,
`IPR2021-00693, Paper 11 (PTAB Oct. 13, 2021) .......................................passim
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020) .........................................passim
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2020-00854 (PTAB Oct. 28, 2020) .......................................................passim
`Bose Corp. v. Koss Corp.,
`IPR2021-00680, Paper 15 (PTAB Oct. 13, 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) .............................................. 19
`Statutes
`35 U.S.C. § 314(a) ......................................................................................... 9, 10, 20
`Other Authorities
`37 C.F.R. § 42.107(a) ................................................................................................. 1
`37 C.F.R. §42.122(b) ............................................................................................... 26
`84 Fed. Reg. 33,925 (July 16, 2019) .......................................................................... 9
`
`
`iv
`
`

`

`
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`EXHIBIT LISTING
`
`Description
`Exhibit
`KOSS-2001 Annotated listing of related cates 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.,
`IPR2021-00592, Paper 2 (Mar. 2, 2021)
`
`KOSS-2006 Petition for Inter Partes Review, Bose Corp. v. Koss Corp.,
`IPR2021-00680, Paper 2 (Mar. 17, 2021)
`
`KOSS-2007 Petition for Inter Partes Review, Apple Inc. v. Koss Corp.,
`IPR2021-00693, Paper 2 (Mar. 23, 2021)
`
`KOSS-2008 Patent Owner’s Updated Mandatory Notices, Apple Inc. v. Koss
`Corp., IPR2021-00592, Paper 6 (Mar. 29, 2021)
`
`KOSS-2009 Patent Owner’s Updated Mandatory Notices, Apple Inc. v. Koss
`Corp., IPR2021-00693, Paper 4 (Mar. 26, 2021)
`
`KOSS-2010 Decision, Apple Inc. v. Koss Corp., IPR2021-00592, Paper 9
`(PTAB Aug. 23, 2021)
`
`KOSS-2011 Decision, Bose Corp. v. Koss Corp., IPR2021-00680, Paper 15
`(PTAB Oct. 13, 2021)
`
`v
`
`

`

`IPR2022-00188
`Patent Owner Preliminary Response
`
`Description
`Exhibit
`KOSS-2012 Decision, Apple Inc. v. Koss Corp., IPR2021-00693, Paper 11
`(PTAB Oct. 13, 2021)
`
`KOSS-2013 Ex. 1003 (Williams Declaration) from IPR2021-00680
`
`KOSS-2014 Ex. 1005 (Casali Declaration) from IPR2021-00680
`
`KOSS-2015 Petition for Inter Partes Review, Bose Corp. v. Koss Corp.,
`IPR2021-00612, Paper 2 (Mar. 3, 2021)
`
`
`
`
`
`
`
`vi
`
`

`

`
`I.
`
`IPR2022-00188
`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) in response to the Inter
`
`Partes Review (“IPR”) petition (“Petition”) filed by Apple Inc. (“Petitioner” or
`
`“Apple”) for U.S. Patent No. 10,469,934 (“’934 Patent”). This proceeding is
`
`Petitioner’s third IPR (“Third Apple IPR”) for the ’934 Patent. Petitioner’s first IPR,
`
`IPR2021-00592 (“First Apple IPR”), was instituted but Petitioner’s second IPR,
`
`IPR2021-00693 (“Second Apple IPR”), was denied institution. See KOSS-2010
`
`(Decision, Apple Inc. v. Koss Corp., IPR2021-00592, Paper 9 (PTAB Aug. 23,
`
`2021)); KOSS-2012 (Decision, Apple Inc. v. Koss Corp., IPR2021-00693, Paper 11
`
`(PTAB Oct. 13, 2021)). A third party, Bose Corporation (“Bose”), also filed an IPR,
`
`IPR2021-00680 (“Bose IPR”), for the ’934 Patent, which was instituted. KOSS-
`
`2011 (Decision, Bose Corp. v. Koss Corp., IPR2021-00680, Paper 15 (PTAB Oct.
`
`13, 2021)). Petitioner seeks to join this Third Apple IPR with the Bose IPR. See
`
`IPR2022-00188, 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
`
`- 1 -
`
`

`

`
`(“Schrager”) (APPLE-1101), when it filed each of the First and Second Apple IPRs,
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`which were both filed about seven months before Petitioner filed the Third Apple
`
`IPR. Yet, Petitioner offered no reason or justification for its seven-month wait to
`
`file the Third Apple IPR against the ’934 Patent.
`
`Petitioner’s Joinder Motion 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 ’934 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, Petitioner argued that “[t]he 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.” Joinder
`
`Motion, 6 (brackets and italics in original). However, this statement completely
`
`ignores the fact that Petitioner filed the Second Apple IPR after the Bose IPR was
`
`filed. Petitioner, thus, ignores the Second Apple IPR in an attempt to analogize the
`
`facts into compliance with those considered in the Uniloc decision. However, the
`
`
`- 2 -
`
`

`

`
`present facts are not analogous to Uniloc and, as illustrated herein, weigh in favor of
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`discretionary denial of institution.
`
`Additionally, the Third Apple IPR makes no mention of the Second Apple
`
`IPR in the mandatory notices. The Third Apple IPR references the First Apple IPR
`
`once and references the Bose IPR twice in the mandatory notices, but tellingly omits
`
`in the mandatory notices any reference to the Second Apple IPR, IPR2021-00693,
`
`which was filed after the Bose IPR. Pet.1, 2; KOSS-2001 (annotated version of page
`
`2 of Petition). In fact, both the Petition and Joinder Motion are completely silent on
`
`the Second Apple IPR.
`
`In the end, regardless of whether this is Petitioner’s second or third IPR of the
`
`’934 Patent, there are abundant reasons to deny institution under General Plastic.
`
`II. BACKGROUND
`A. Timeline of Events
`The following is a sequence of relevant events.
`
`
`1 “Pet.” as used herein denotes the petition for this Third Apple IPR, i.e., IPR2022-
`
`00188, 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.
`
`
`- 3 -
`
`

`

`
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`•
`
`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
`
`Western District of Texas for infringing the ’934 Patent (as well as other patents
`
`owned by Patent Owner). APPLE-1055 (complaint against Bose); APPLE-1129
`
`(complaint against Petitioner).
`
`•
`
`On March 2, 2021, Petitioner filed the First Apple IPR. KOSS-2005
`
`
`- 4 -
`
`

`

`
`(Petition from IPR2021-00592).
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`•
`
`On March 3, 2021, Bose filed an IPR, IPR2021-00612, for another
`
`patent, Patent No. 10,206,025, that is related to the ’934 Patent. KOSS-2015.
`
`•
`
`On March 17, 2021, Bose filed the Bose IPR. KOSS-2006 (Petition
`
`from IPR20201-00680). The Bose IPR relied on different prior art than the First
`
`Apple IPR. Compare KOSS-2006 at 2 to KOSS-2005 at 1-2.
`
`•
`
`On March 23, 2021, Petitioner filed the Second Apple IPR. KOSS-
`
`2007 (Petition from IPR2021-00693). The Second Apple IPR also relied on
`
`different prior art than the Bose IPR. Compare KOSS-2007 at 1-2 to KOSS-2006 at
`
`2. Also, the Second Apple IPR identified the Bose IPR in its listing of related matters
`
`in the mandatory notices. See KOSS-2007 at 76. Shown below is an excerpt from
`
`Petitioner’s petition in the Second Apple IPR where Petitioner specifically identified
`
`the Bose IPR. Id.
`
`Excerpt, Second Apple IPR petition (KOSS-2007 at 76)
`
`In the Second Apple IPR, Petitioner expressly acknowledged that the Bose
`
`
`
`
`- 5 -
`
`

`

`
`IPR relied on “an entirely different set of prior art.” KOSS-2007 at 69. Thus,
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`Petitioner was aware of the Bose IPR, including the art relied upon by Bose, at least
`
`by March 23, 2021.
`
`•
`
`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 17, 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.
`
`2010.
`
`•
`
`•
`
`•
`
`On August 23, 2021, the Board instituted the First Apple IPR. KOSS-
`
`On October 13, 2021, the Board instituted the Bose IPR. KOSS-2011.
`
`On October 13, 2021, the Board denied institution of the Second Apple
`
`IPR. KOSS-2012.
`
`•
`
`On November 15, 2021, Petitioner filed the Third Apple IPR.
`
`IPR2022-00188, Paper 2. Petitioner concurrently filed the Joinder Motion that seeks
`
`to join this proceeding with Bose’s IPR. IPR2022-00188, 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., 5; see also Joinder Motion at 6
`
`
`- 6 -
`
`

`

`
`(“substantively the same as …”). The grounds and prior art asserted in this
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`proceeding are identical to the grounds and prior art asserted in the Bose IPR.
`
`Compare Pet., 6 to KOSS-2006 at 2. The declarations are also identical. Compare
`
`APPLE-1003 (Williams Dec.) and APPLE-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 9, 12.
`
`Petitioner asserted several times in the Joinder Motion that Petitioner was not
`
`aware of Schrager, the primary reference for Grounds 1A-1D of the Bose IPR when
`
`Petitioner filed the First Apple IPR. At page 4, the Joinder Motion states that “at the
`
`time of filing IPR2021-00592,” that is, the First Apple IPR, Petitioner “was not
`
`aware of the primary reference that forms the basis of Grounds 1A-1D” of the Bose
`
`IPR. Joinder Motion at 4. Later, Petitioner elaborated that it was “not aware of” of
`
`Schrager “before Bose filed IPR2021-00612 ….” Id., 6; see also KOSS-2015 (Bose
`
`petition for IPR2021-00612). Thus, 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
`
`
`- 7 -
`
`

`

`
`for the Third Apple IPR is any mention of what Petitioner knew when Petitioner
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`filed the Second Apple IPR for the ’934 Patent. Although the Second Apple IPR
`
`was filed six (6) days after Bose filed the Bose IPR, Petitioner was clearly aware of
`
`the Bose IPR when Petitioner filed the Second Apple IPR. For example, Petitioner
`
`characterized the art relied upon in the Second Apple IPR Petitioner as being “an
`
`entirely different set of prior art” relative to the Bose IPR. KOSS-2007 at 69.
`
`Petitioner had to know what art was cited in the Bose IPR in order to make this
`
`representation in the Second Apple IPR and, therefore, had to know about Schrager
`
`at the time it filed the Second IPR. Petitioner could have reasonably raised the
`
`grounds it now seeks to institute in the Second Apple IPR or, at the very least, much
`
`earlier than the seven months it took Petitioner to file the Third Apple IPR.2
`
`The Third Apple IPR and Joinder Motion’s complete omission of the Second
`
`Apple IPR, let alone a consideration of what Petitioner knew when it filed the Second
`
`Apple IPR, effectively disguises the fact that Petitioner filed two prior IPRs for the
`
`’934 Patent and knew about Schrager prior to filing those IPRs. See KOSS-2002-
`
`2004; see also KOSS-2007 at 69.
`
`
`2 Patent Owner also twice notified Petitioner about the Bose IPR in March 2021.
`
`KOSS-2008; KOSS-2009.
`
`
`- 8 -
`
`

`

`
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`C.
`Summary of ’934 Patent
`Details about the ’934 Patent are summarized in the prior institution decisions
`
`for the ’934 Patent. See KOSS-2010 at 4-9; KOSS-2011 at 4-9; KOSS-2012 at 4-
`
`10.
`
`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
`
`to deny institution 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
`
`July 2019 Office Trial Practice Guide Update provides that “one petition should be
`
`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
`
`
`- 9 -
`
`

`

`
`determining whether to exercise its discretion under § 314(a). General Plastic,
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`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 was denied institution in April 2019. Uniloc at 5-6. Later, in October
`
`2019, Microsoft filed an IPR against the Uniloc patent, which 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 ’934
`
`Patent. Petitioner filed the First Apple IPR on March 2, 2021 and the Second Apple
`
`IPR on March 23, 2021. KOSS-2005; KOSS-2007. Petitioner filed the petition for
`
`this proceeding on November 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 17, 2021, which is six days
`
`prior to the filing of the Second Apple IPR.
`
`
`- 10 -
`
`

`

`
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`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. As in Uniloc, Petitioner “is using the joinder
`
`procedure as an end run around its failed petition” (Uniloc at 6) and, therefore, the
`
`Board should deny institution of the Third Apple IPR and Petitioner’s motion for
`
`joinder.
`
`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 ’934 Patent includes sixty two (62) claims. The First and Second Apple
`
`IPRs, collectively challenged all claims of the ’934 Patent except claims 49 and 50.
`
`See KOSS-2005 at 1-2; KOSS-2007 at 1-2. This proceeding challenges 47 claims,
`
`excluding claims 23-31, 42-46, and 48. Pet., 6. Thus, with the exception of claims
`
`49 and 50 of the ’934 Patent, the Third Apple IPR once again challenges all of the
`
`claims challenged by the First and Second Apple IPRs, collectively.
`
`There is also substantial overlap of the challenged claims if Petitioner’s two
`
`prior IPRs are considered individually. For example, 28 of the 47 claims, or sixty-
`
`
`- 11 -
`
`

`

`
`percent of the claims, challenged by the Third Apple IPR are the same as those
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`challenged by the First Apple IPR. Compare KOSS-2005 at 1-2 to Pet., 6. Similarly,
`
`33 of the 47 claims, or seventy-percent of the claims, challenged by the Third Apple
`
`IPR are the same as those challenged by the Second Apple IPR. Compare KOSS-
`
`2005 at 1-2 to Pet., 6.
`
`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 ’934 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 Petitioner know when it filed the
`
`Second Apple IPR on March 17, 2021 (KOSS-2007). Patent Owner addresses both
`
`questions below in reverse order.
`
`
`- 12 -
`
`

`

`
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`a. What Petitioner Knew, or Should Have Known, When it
`Filed the Second Apple IPR Petition
`
`Petitioner was aware 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 17, 2021 (KOSS-2006), six days before Petitioner filed the Second
`
`Apple IPR (KOSS-2007) on March 23, 2021.
`
`Petitioner cited the Bose IPR in its mandatory notices in the Second Apple
`
`IPR (KOSS-2007 at 76) and expressly acknowledged that the Bose IPR relied on
`
`“an entirely different set of prior art.” KOSS-2007 at 69. Petitioner had to know
`
`what art was cited in the Bose IPR in order to make the representation that the art
`
`was “entirely different.” To the extent six days might be considered insufficient
`
`time to modify the Second Apple IPR, nothing compelled Petitioner to file the
`
`Second Apple IPR on March 23, 2021. Having been made aware of the Bose prior
`
`art, including Schrager, by at least March 23, 2021, Petitioner could have easily
`
`assessed the Bose prior art at that time and filed the Second Apple IPR at a later date.
`
`Petitioner chose not to, and instead waited over seven months to file the Third Apple
`
`IPR where it cites the prior art in the Bose IPR.
`
`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
`
`
`- 13 -
`
`

`

`
`because Petitioner knew of Schrager at that time. Instead, the Joinder Motion only
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`focuses on what Petitioner knew when it filed the petition for the First Apple IPR.
`
`Joinder Motion at 3-4 (“at the time of filing IPR2021-00592 and until Bose filed
`
`IPR2021-00612 (a petition against related U.S. Patent No. 10,206,025) on March 3,
`
`2021, Apple was not aware of the primary reference that forms the basis of Grounds
`
`1A-1D of the 680 Proceeding …”); 7 (Petitioner asserting that it was not aware of
`
`Schrager “before Bose filed IPR2021-00612”). The Joinder Motion improperly
`
`ignores the Second Apple IPR and instead focuses solely on what Petitioner knew
`
`when it filed the First Apple IPR 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 1A-1D” of the Bose IPR. Joinder Motion at 3-4. That primary
`
`reference is U.S. Patent No. 7,072,686 (“Schrager”). Id. at 7. 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, indicating that it was aware of the other
`
`references raised in the Third Apple IPR 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.
`
`
`- 14 -
`
`

`

`
`General Plastic, Paper 19 at 20.
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`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 materially false. Petitioner had been
`
`aware of Schrager since at least 2014. See KOSS-2003; see also KOSS-2004. In
`
`fact, by the time Petitioner filed the First Apple IPR, Petitioner had cited Schrager
`
`to the Office over 100 times in its own patent applications. KOSS-2002. This
`
`information is publicly available via Google Patents (patents.google.com) and easily
`
`accessed, merely requiring the time to enter the seven digits of the Schrager patent
`
`number and scroll to the heading “Cited By”. Petitioner could have spent the few
`
`seconds required to confirm the assertion that it was not aware of Schrager prior to
`
`the filing of the First Apple IPR petition. Instead, the Joinder Motion relies on the
`
`false assertion that Petitioner “was not aware” of Schrager. Joinder Motion at 7.
`
`Petitioner was aware of Schrager and therefore, the Joinder Motion must be denied.
`
`Petitioner’s Joinder Motion also failed to offer an 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
`
`
`- 15 -
`
`

`

`
`lawsuit involving the ’934 Patent,3 which were served prior to the filing of the Bose
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`IPR, did not cite Schrager. Joinder Motion at 7. 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
`
`electronically searchable on most patent searching websites. The U.S. Patent and
`
`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 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.).
`
`
`- 16 -
`
`

`

`
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`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 November 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 November 15, 2021, the Board instituted both the First Apple IPR and
`
`the Bose IPR, and denied institution of the Second Apple IPR, affording Petitioner
`
`insight as to which arguments were and were not persuasive. KOSS-2010 to 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-
`
`8. However, just like in Uniloc, Petitioner had institution decisions for the First
`
`Apple IPR, the Bose IPR, and the Second Apple IPR when it filed the Third Apple
`
`IPR. Accordingly, just like in Uniloc, “the third General Plastic factor weighs in
`
`favor of denying institution of the proceeding.” Uniloc at 10.
`
`
`- 17 -
`
`

`

`
`
`IPR2022-00188
`Patent Owner Preliminary Response
`
`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 7. 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 23, 2021, when
`
`Petitioner filed the petition for the Second Apple IPR, as evidenced by Petitioner’s
`
`characterization of prior art in the Bose IPR in the Second Apple IPR. KOSS-2007
`
`at 69.
`
`