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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`KOSS CORPORATION,
`Patent Owner
`
`Case IPR2022-00188
`Patent 10,469,934
`
`PETITIONER’S MOTION FOR JOINDER
`
`
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`
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`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. 10,469,934 (“the ’934 Patent”) in
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`Bose Corporation v. Koss Corporation, IPR2021-00680 (“the 680 Proceeding”).
`
`This motion is timely filed within one month of the Board’s October 13, 2021
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`institution decision in the 680 Proceeding.1
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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 subject Apple and
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`future litigants to unnecessary inefficiencies. By joining Apple to the 680
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`Proceeding, the Board can ensure that Koss need not adjudicate the grounds of the
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`680 Proceeding in both the PTAB and its concurrent litigation against Apple—an
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`inefficiency Koss strenuously argued should be avoided in its preliminary response
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`in the 680 proceeding. APPLE-1047 see IPR2021-00680, Paper 10 at 7-23.
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`Further, Apple’s interests may not be adequately protected in the 680 Proceeding,
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`particularly if Bose settles with Koss. With the Board having already found a
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`1 November 13, 2021 was a Saturday, so the next succeeding business day (No-
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`vember 15) is the deadline for filing this motion. 35 U.S.C. §21(b).
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`2
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`
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`reasonable likelihood that the’934 Patent is unpatentable, Koss should not be
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`allowed through denial of joinder to subvert the efficiency and fairness at the core
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`of these proceedings, which would otherwise prevent Koss from continuing to
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`assert a patent whose claims have been found reasonably likely invalid against four
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`other defendants by strategically settling its case against Bose. Accordingly,
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`Petitioner should be allowed to join in a proceeding affecting a patent asserted
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`against it.
`
`II. BACKGROUND AND RELEVANT FACTS
`Koss Corporation (“Koss”) is the purported owner of the ’934 Patent. Koss
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`asserted the ’934 Patent (and related patents US 10,298,451, US 10,206,025, 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 ’934 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.
`
`On March 2, 2021, Apple filed its first petition against the ’934 Patent in
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`IPR2021-00592. Fifteen days later, on March 17, 2021, Bose Corporation
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`independently filed its own petition against the ’934 Patent in the 680 Proceeding.
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`The prior art asserted in the 680 Proceeding is entirely different than the prior art
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`asserted by Apple in IPR2021-00592. Indeed, at the time of filing IPR2021-00592
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`and until Bose filed IPR2021-00612 (a petition against related U.S. Patent No.
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`3
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`
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`10,206,025) on March 3, 2021, Apple was not aware of the primary reference that
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`forms the basis of Grounds 1A-1D of the 680 Proceeding, grounds that account for
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`nearly half of the petition in the 680 Proceeding. Nor was Apple aware of the
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`persuasive technical explanations of Drs. Tim Williams and John Casali supporting
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`all of the grounds in the 680 Proceeding. The 680 Proceeding and Apple’s
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`IPR2021-00592, were filed so close in time as to be all but indistinguishable
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`procedurally from simultaneously-filed petitions. And the period of time between
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`Bose’s filing of the 680 Proceeding and this joinder motion should not be relevant,
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`as it does not affect the schedule of the 680 Proceeding or substantially prejudice
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`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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`4
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`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.
`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 680 Proceeding Is Appropriate
`Apple respectfully submits that joinder with the 680 Proceeding is
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`5
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`
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`appropriate. The Joinder Petition is substantively the same as the petition filed in
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`the 680 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 680 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 680 Proceeding.
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`The Board has held that joinder of the type requested here should be
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`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 680
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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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`6
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`
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`1.
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`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 1A-1D of the
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`680 Proceeding—before Bose filed IPR2021-00612 (a petition against related U.S.
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`Patent No. 10,206,025) a day later on March 3, 2021. Indeed, none of the initial
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`invalidity contentions Apple served prior to that filing cited to Schrager. The
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`Schrager-based grounds account for 43 pages of the petition in the 680 Proceeding,
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`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 680 Proceeding. Indeed, in the
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`co-pending litigation, expert discovery was still far from completion when Apple
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`filed its first ’934 Petition and Bose filed its petition in the 680 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 680 Proceeding, as evidenced by the Board’s
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`decision to institute.
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`2.
`
`The Petition in the 680 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 680 Proceeding just fifteen days after Apple
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`filed its first ’934 petition (IPR2021-00592), which is so close in time as to be all
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`7
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`but indistinguishable procedurally from a simultaneously-filed petition. The
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`grounds set forth in the 680 Proceeding are substantially different from the grounds
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`that were independently developed in Apple’s first ’934 petition, so the fifteen
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`days between the two filings could not reasonably have provided Bose substantial
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`benefit in preparing its petition. Bose certainly did not have access to Koss’s pre-
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`liminary response or the Board’s institution decision when preparing the petition
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`for the 680 Proceeding.
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`To the contrary, Koss benefited from having two-thirds of its three-month
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`preliminary response period to review both petitions together when preparing its
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`preliminary responses. APPLE-1145; APPLE-1146. Further, there exists greater
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`reason to institute this joinder petition under Fintiv, because Apple now stipulates
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`that, unless the Board denies or later vacates institution of this joinder petition, Ap-
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`ple will not seek resolution in the trial in the Apple Litigation invalidity based on
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`any ground “that utilizes, as a primary reference, U.S. Patent Application Publica-
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`tion No. 2007/0136446 (“Rezvani-446”) or U.S. Patent No. 7,072,686
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`(‘Schrager’).” APPLE-1047. Thus, by granting Apple’s motion for joinder, the
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`Board can insure a lack of overlap between the 680 Proceeding and Koss’s parallel
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`litigation against Apple.
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`8
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`Moreover, the period of time between Bose’s filing of the 680 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 680 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 altera-
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`tion to the existing schedule in the 680 Proceeding, the period of time between
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`Bose’s filing of the 680 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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`could result in continued assertion by Koss of claims deemed by this Board reason-
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`ably likely invalid, by opportunistically settling its case against Bose and escaping
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`the Board’s expert evaluation of the grounds advanced in the 680 proceeding.
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`3.
`
`This Motion for Joinder Will Not Affect the Re-
`sources 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
`
`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 680 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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`9
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`committed for adjudicating the instituted 680 Proceeding, nor will it need to alter
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`the timeline of the 680 Proceeding to account for Apple’s joinder thereto.
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`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
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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 680 Proceeding was filed only
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`fifteen days after Apple’s first petition and without the benefit of either Koss’s pre-
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`liminary response in IPR2021-00592 or the Board’s institution decision. Further,
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`at the time of filing its petitions against the ’934 Patent, Apple was not aware of
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`the primary reference that forms the basis of Grounds 1A-1D of the 680 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.
`
`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
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`10
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`in the 680 Proceeding and its accompanying expert declarations. Apple does not
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`seek to introduce grounds or claims not currently in the 680 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 680 Proceeding—nor should the Board permit
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`any. The Joinder Petition introduces no new substantive issues relative to the 680
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`Proceeding and does not seek to broaden the scope of the 680 Proceeding.
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`Joinder will not impact the 680 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 680 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 680 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 680 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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`11
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
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`proposed joined proceeding.
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`Accordingly, joinder with the 680 Proceeding does not unduly burden or
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`negatively impact the trial schedule.
`
`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 680
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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 680 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 680 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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`12
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`
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`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 680 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 680 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 680
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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, IPR2021-00680.
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`13
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`Dated: November 15, 2021
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`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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`14
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`Case IPR2022-00188
`Attorney Docket No: 50095-0018IP3
`
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on November
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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:
`
`K&L GATES LLP-Pittsburgh
`210 SIXTH AVENUE
`PITTSBURGH PA 15222-2613
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
`
`
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