Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: August 23, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE,INC.,
`Petitioner,
`
`V.
`
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00592
`Patent 10,469,934 B2
`
`Before PATRICK R. SCANLON, DAVID C. McKONE,and
`GREGG I. ANDERSON,Administrative Patent Judges.
`
`ANDERSON,Administrative Patent Judge.
`
`DECISION
`Granting Institution ofInter Partes Review
`35 US.C. § 314
`
`
`571-272-7822
`
`Paper 9
`Date: August 23, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE,INC.,
`Petitioner,
`
`V.
`
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00592
`Patent 10,469,934 B2
`
`Before PATRICK R. SCANLON, DAVID C. McKONE,and
`GREGG I. ANDERSON,Administrative Patent Judges.
`
`ANDERSON,Administrative Patent Judge.
`
`DECISION
`Granting Institution ofInter Partes Review
`35 US.C. § 314
`
`
`
`IPR2021-00592
`Patent 10,469,934 B2
`
`I.
`
`INTRODUCTION
`
`Apple,Inc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 1-3, 5, 7, 9-11, 14-16, 19, 21, 23-25, 28, 30, 32-37, 39,
`
`42-43, 45-48, and 51-57 of U.S. Patent No. 10,469,934 (Ex. 1001, “the
`
`’934 patent”). Paper 2 (“Pet.”). Koss Corporation (“Patent Owner”) filed a
`
`Preliminary Response. Paper 8 (‘‘Prelim. Resp.”).
`
`Wehavejurisdiction under 35 U.S.C. § 314. Upon considering the
`
`record developed thus far, for reasons discussed below, weinstitute inter
`
`partes review.
`
`Il. BACKGROUND
`
`A. Real Parties in Interest
`
`Petitionerstates it is the real party-in-interest. Pet. 74. Patent Owner
`
`states that it is the real party in interest. Paper 3 (“Mandatory Notice by
`
`Patent Owner”), 1; see also Papers 6 and 7 (updates).
`
`B. Related Matters
`
`Both partieslist the related lawsuit alleging infringement ofthe ’892
`
`patent, Koss Corporation v. Apple Inc., Case No. 6:20-cv-00665 (W.D.
`
`Tex.) (“District Court” or “District Court Lawsuit”). Pet. 74; Paper 3, 1.
`
`Patent Ownerlists other lawsuits involving the 934 patent, United States
`
`applications to which the 934 patent claims priority, and pending inter
`partes reviews as Related Matters. Paper 3 (updated in Papers 6 and 7), 1—
`
`2.
`
`1. Other Lawsuits
`
`Patent Owneridentifies five other lawsuits involving the 934 patent:
`
`Koss Corp. v. Skullcandy, Inc., Case No. 6:20-cv-00664 (W.D. Tex); Koss
`
`Corp. v Plantronics, Inc., Case No. 6-20-cv-00663 (W.D. Tex.); Koss Corp.
`
`
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`IPR2021-00592
`Patent 10,469,934 B2
`
`v. Bose Corp., Case No. 6-20-cv-00661 (W.D. Tex); Bose Corporationv.
`
`Koss Corp., Case No. 1-20-cv-12193 (D. Mass.); and Apple Inc. v. Koss
`
`Corp., Case No. 4:20-cv-05504 (N.D. Cal.). Paper 3, 1. In addition, Patent
`
`Owneridentifies Koss Corp. v. Skullcandy, Inc., Case No. 2:21-cv-00203
`
`(D. Utah). Paper 7, 1.
`
`2. United States Applications
`
`Patent Ownerlists the following applications listed as Related
`
`Applications to which the ’934 patent claims priority: PCT application No.
`
`PCT/US2009/039754,filed April 7, 2009 (the “PCT Application”) and
`
`provisional application Serial No. 61/123,265 filed April 8, 2008 (the
`
`“Provisional Application’). Paper3, 1.
`
`3. Inter Partes Review Proceedings
`Patent Ownerlists the following inter partes review proceedings'
`
`challenging patents that claim priority to the PCT Application and the
`
`Provisional Application:
`
`Bose Corp. v. Koss Corp., IPR2021-00297 challenging USPatent
`
`10,368,155 B2; Apple Inc. v. Koss Corp., IPR2021-00305, filed December
`
`15, 2020, challenging US Patent 10,506,325 B1); Apple Inc. v. Koss Corp.,
`
`IPR2021-00381, filed January 4, 2021, challenging US Patent 10,491,982
`
`B1; Apple Inc. v. Koss Corp., 1PR2021-00546,filed February 22, 2021,
`
`challenging US Patent 10,206,025 B1; and Apple Inc. v. Koss Corp.,
`IPR2021-00612 challenging U.S. Patent 10,206,025, filed March 3, 2021.
`Paper 3, 1-2.
`
`' Additional inter partes review proceedings involving these sameparties
`include Apple Inc. v. Koss Corporation, IPR2021-00255 (255 IPR”), filed
`December15, 2020, and Apple Inc. v. Koss Corporation, IPR2021-00600,
`filed March 7, 2021, both challenging US Patent 10,298,451 B1.
`
`3
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`IPR2021-00592
`Patent 10,469,934 B2
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`Patent Owneraddsthe followingtoits list of inter partes review
`
`proceedings whichalso claim priority to the PCT Application and the
`
`Provisional Application: Apple Inc. v. Koss Corp., IPR2021-00626,filed
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`March17, 2021, challenging US Patent 10,206,025 B1; Apple Inc. v. Koss
`
`Corp., IPR2021-00679,filed March 22, 2021, challenging US Patent
`
`10,506,325 B1; and Apple Inc. v. Koss Corp., IPR2021-00686,filed March
`
`22, 2021, challenging US Patent 10,491,982 B1. Paper6, 2.
`
`Twointer partes review proceedingsare directed to claims of the
`
`’934 patent not challenged here, including: Bose Corp. v. Koss Corp.,
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`IPR2021-00680 (“’680 IPR”); and Apple Inc. v. Koss Corp., IPR2021-
`
`00693 (“693 IPR”), both filed March 17, 2021.
`
`C. The ’934 Patent
`
`The application for the ’934 patent’s-earliest priority dates are April
`7, 2009, to the PCT Application and April 8, 2008, tothe Provisional
`
`Application. Ex. 1001, code (63).
`
`1. Background Technology
`
`The °934 patent explains that wired headphonesinterconnecting
`headphonesanda data storage unit are “cumbersome.” Ex. 1001, 1:42—51.
`
`Cordless headphonesthat connect wirelessly via IEEE 802.11, e.g., via
`
`Bluetooth connection, to a WLAN-ready laptop or personal computer have
`
`been proposed but “such headphonesare also quite large and notin-ear type
`phones.” Id. at 1:58-62; see also Ex. 1003 {29 (Cooperstock Declaration
`describing Bluetooth as a wireless communication employing 802.11
`
`(WiFi).
`
`
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`IPR2021-00592
`Patent 10,469,934 B2
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`2. The ’934 Patent’s Wireless Earphones
`
`The 934 patent describes and claims a wireless earphonethat
`
`receives streaming audio data from a data source such as an audio playeror
`
`computer via ad hoc wireless network and infrastructure wireless networks,
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`and that transitions seamlessly between wireless networks. Ex. 1001, 1:66—
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`2:3. The ’934 patent describes an “‘ad hoc wireless network”as “a network
`
`where two .
`
`.
`
`. wireless-capable devices, such as the earphone and a data
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`source, communicate directly and wirelessly, without using an access
`
`point.” Jd. at 3:3-6. An ad hoc networkis in contrast to an “infrastructure
`
`wireless network” whichis ‘“‘a wireless network that uses one or more
`
`access points to allow a wireless capable device, such as the wireless
`
`earphone,to connect to a computer network, such as a LAN or WAN
`
`(including the Internet).” Jd. at 3:6-11.
`
`The earphonehasa bodyandanear canal portion forinsertion into
`
`the canal of the user of the earphone. Ex. 1001, 3:17—20, 3:54—-56. In some
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`embodiments there may be “two discrete wireless earphones,” one in each
`
`ear. Id. at 3:47-49. Figure 2A ofthe ’934 patent is reproduced below.
`
`24
`
`AD HOC WIRELESS
`KETWORK
`
`
`
`DATA SOURCE
`
`
`FIG. 2A
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`
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`IPR2021-00592
`Patent 10,469,934 B2
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`Figure 2A illustrates one of the communication modesfor the wireless
`earphone.
`
`Id. at 2:28-30. Figure 2A illustrates a data source 20 in communication
`
`with earphone 10 over ad hoc wireless network 24. Id. at 4:26-32. The
`
`earphonehasatransceiver circuit to communicate wirelessly with the data
`
`source. Id. at 4:28-32. The data source maybea digital audio player
`
`(DAP). Id. at 4:32-33. The DAP transmits audio wirelessly to earphone(s)
`via the ad hoc network if the DAP and earphone(s) are “in range” of that
`
`network. Jd. at 4:56-57. “Whenin range, the data source 20 may
`
`communicate with the earphone 10 via the ad hoc wireless network 24
`
`using any suitable wireless communication protocol,” including Bluetooth
`
`and other communication protocols. Jd. at 4:56-61.
`
`The earphone mayhavean associated web page that a user may
`
`access through a server. Ex. 1001, 8:7—-9, Fig. 2D. “[A]t the website, the
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`user could set various content features andfilters, as well as adjust various
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`sound control features, such as treble, bass, frequency settings, noise
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`cancellation settings, etc.,” all of which are set by the user. Jd. at 8:15-21.
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`“In addition, the user could set preferred streaming audio stations, such as
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`preferred Internet radio stations or other streaming audio broadcasts.” Jd. at
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`8:18-21. Thus, “instead of listening to streaming audio from the data
`
`source 20, the user could listen to Internet radio stations or other streaming
`
`audio broadcasts received by the earphone 10.” /d. at 8:21-24.
`
`D. Illustrative Claim
`
`Claims 1-3, 5, 7, 9-11,14—16, 19, 21, 23-25, 28, 30, 32-37, 39, 42-
`
`43, 45-48, and 51-57 of the ’934 patent are challenged. Pet. 1-2, 4-68.
`
`Independentclaim 1 is the only independent claim. Claims 2-3, 5, 7, 9-11,
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`
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`IPR2021-00592
`Patent 10,469,934 B2
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`14-16, 19, 21, 23-25, 28, 30, 32-37, 39, 42-43, 45-48, and 51-57 depend
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`directly or indirectly from claim 1. All claims are directed to a “headphone
`
`assembly.” Claim 1 is reproduced belowasillustrative.
`l.pre? A headphone assembly comprising:
`
`l.a
`
`1.b
`
`l.c
`
`1.d
`
`l.e
`
`1.f
`
`1.g
`
`1.h
`
`first and second earphones, wherein eachofthe first and
`second earphones comprises an acoustic transducer; and
`
`an antennafor receiving wireless signals from a mobile,
`digital audio player via one or more ad hoc wireless
`communication links;
`a wireless communication circuit connected to the
`antenna, wherein the wireless communicationcircuit is
`for receiving and transmitting wireless signals to and
`from the headphoneassembly;
`
`a processor;
`
`a memory for storing firmware that is executed by the
`processor;
`
`a rechargeable battery for powering the headphone
`assembly; and
`
`a microphonefor picking up utterances by a userof the
`headphone assembly; and
`
`wherein the headphone assembly is configuredto play,
`by the first and second earphones, digital audio content
`transmitted by the mobile, digital audio player via the
`one or more ad hoc wireless communication links;
`
`1.
`
`wherein the processoris configured to, upon activation of
`
`* For purposesofthis Decision, we follow Petitioner’s format where each
`claim limitation is separately identified by the claim numberfollowed by a
`letter. See Pet. 14—32. (limitations 1.pre—1,}).
`
`7
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`IPR2021-00592
`Patent 10,469,934 B2
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`initiate
`a user-control of the headphone assembly,
`transmission of a request to a remote, network-connected
`server that is in wireless communication with the mobile,
`digital audio player; and
`
`1.j|wherein the headphone assemblyis for receiving firmware
`upgrades transmitted from the remote, network-connected
`server.
`
`Ex. 1001, 18:2-32.
`
`E. Evidence ofRecord
`
`This proceeding relies on the following prior art references and
`
`expert testimony:
`
`Haupt, PCT/EP 2005/011228, issued Apr. 27, 2006 (Ex. 1004,
`
`including English translation of Germanoriginal patent)
`
`Seshadri, US 2006/0166176 A1, published July 27, 2006 (Ex. 1007);
`
`Rao, US 7,881,745 B1, issued Feb. 1, 2011 (Ex. 1009);
`
`Paulson, US 7,551,940 B2, issued June 23, 2009 (Ex. 1011); and
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`Rosener, US 2008/0076489 A1, published Mar. 27, 2008 (Ex. 1008).
`
`Petitioner also relies on the Declaration of Dr. Jeremy Cooperstock
`
`(“Cooperstock Declaration,” Ex. 1003).
`
`F. Prior Art and Asserted Grounds
`
`Petitioner asserts that claims 1—3, 5, 7, 9-11, 14-16, 19, 21, 23-25,
`
`28, 30, 32-37, 39, 42-43, 45-48, and 51-57 would have been unpatentable
`
`on the following grounds(Pet. 1-2, 4-68):
`
`
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`IPR2021-00592
`Patent 10,469,934 B2
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`‘Claim(s)
`*
`e 2
`Challenged
`35 US.C."§
`53, 54, 56-57 103,
`1, 2, 9, 32, 47, 52,
`103.
`
`\
`Reference(s)/Basis
`
`
`
`
`Haupt, Seshadri, Rao
`Haupt, Seshadri, Rao, Paulson
`
`10, 14, 15, 23,24,|°*
`
`
`Haupt, Seshadri, Rao, Rosener
`33-36, 42,43, 46,
`103
`
`
`
`
`48-51, 55
`Re)
`
`28, 30, 37, 39, 45
`
`103
`
`Paulson
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`Il]. PROCEDURAL ISSUES
`
`Patent Owneralleges the advancedstatus of the District Court
`
`Lawsuitjustifies discretionary denial. Prelim. Resp. 6-24. Patent Owner
`also argues the same or substantially the sameprior art and arguments were
`made during prosecution andinstitution should be denied under 35 U.S.C.
`§ 325(d). Id. at 24-39. Both issues are addressed below.
`
`A. Discretion to Institute
`
`The Board has discretion notto institute trial. See 35 U.S.C.
`
`§§ 314(a) and 324(a) (2018) (each authorizing institution ofa trial under
`particular circumstances, but not requiring institution under any
`
`circumstances); 37 C.F.R. § 42.108(a) (stating “the Board will authorize the
`
`review to proceed onall of the challenged claims’’) (emphasis added); cf
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to denya petition is a matter committed to the Patent
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended 35 U.S.C.'§§ 102 and 103, effective
`March 16, 2013. Because the application that resulted in the ’982 patent
`has an effective filing date before this date, the pre-AIA versions of § 103
`apply.
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`
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`IPR2021-00592
`Patent 10,469,934 B2
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`Office’s discretion.”); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356,
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`1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is
`
`permitted, but never compelled, to institute an [inter partes review]
`
`proceeding”).
`
`Our precedential and informative decisions makeclear that the Board
`
`may exercise discretionnotto institute a trial before the Boardin light of
`
`the advancedstate of ongoing,parallel litigation. See NHK Spring Co.v.
`
`Intri-Plex Techs., Inc., 1PR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`
`(precedential) (“NHK Spring”) and Apple Inc. v. Fintiv, Inc., IPR2020-
`
`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“‘Fintiv I’); see also
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May13, 2020)
`
`(informative) (denyinginstitution in light of an ongoing,parallel district
`court proceeding) (“Fintiv IP); Sand Revolution I, LLC v. Cont’l
`Intermodal Grp. — Trucking LLC, IPR2019-01393, Paper 24 (PTAB
`
`June 16, 2020) (informative) (Sand Revolution ID (applying Fintiv I factors
`
`in light of ongoing, parallel district court litigation and instituting trial).
`
`In NHKSpring, the Board considered the advancedstate of a parallel
`
`district court proceeding as a factor favoring denial of institution of an inter
`
`partes review proceeding. NHK Spring, Paper 8 at 19-20. The Boardlater
`
`identified a non-exclusivelist of factors to consider when applying NHK
`
`Spring to determine if we should exercise discretion to not instituteatrial in
`
`light of a parallel proceeding in an advancedstate. Fintiv J, Paper 11 at 5—
`
`6.
`
`.
`
`Neither party contests the facts asserted by the other regarding the
`
`status of the District Court Lawsuit. In determining whetherto exercise
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`10
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`IPR2021-00592
`Patent 10,469,934 B2
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`discretion to deny institution under 35 U.S.C. § 314(a), we consider the
`
`factors set forth in Fintiv I. Fintiv I, Paper 11 at 9.
`
`Factor 1. Whether the court granted a stay or evidence exists that one may
`be grantedifa proceeding is instituted.
`
`Fintiv I indicated that, in previous Board decisions, the existence of a
`
`district court stay pending Boardresolution of an inter partes review has
`
`weighedstrongly against discretionary denial, while a denial of such a stay
`request sometimes weighs in favor of discretionary denial. Fintiv I, Paper
`11 at 6-8.
`
`Petitioner asserts that a stay of the District Court Lawsuit would be
`
`appropriate if we institute an inter partes review, but does not contendthat
`
`it has filed a motion for a stay. Pet. 68. Patent Ownernotes that Petitioner
`
`has not movedfor a stay or represented that it would do so. Prelim. Resp.
`
`7-8.
`
`However, determining how the District Court might handle a motion
`
`for stay that has not yet been filed invites conjecture. It would be improper
`
`to speculate, at this stage, what the District might do regarding a motion to
`
`stay, and given the particular circumstances of this case. Accordingly, this
`
`factor is neutral to the exercise of our discretion. Cf Sand Revolution II,
`
`Paper 24 at 7(‘In the absence of specific evidence, we will not attempt to
`
`predict how thedistrict court in the related district court litigation will
`
`proceed because the court may determine whetheror notto stay any
`
`individual case, including the related one, based on a variety of
`
`circumstances and facts beyond our control and to which the Boardis not
`
`privy.”); Fintiv I, Paper 15 at 12 (“We decline to infer, based on actions
`
`taken in different cases with different facts, how the District Court would
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`11
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`rule should a stay be requested by the parties in the parallel case here. This
`
`factor does not weigh for or against discretionary denial in this case”).
`
`Factor 2. Proximity ofthe court’s trial date to the Board’s projected
`statutory deadlinefor afinal written decision.
`
`The District Court indicated that it “expects to set” April 18, 2022,as
`
`the date for Jury Selection/Trial. Ex. 1016 (District Court Lawsuit, Agreed
`
`Scheduling Order), 4; Pet. 69. Petitioner, pointing to a journalarticle,
`
`contendsthat the trial date is uncertain due to the propensity of the District
`
`Court to reschedule trials once the PTAB has denied a related petition. Pet.
`
`69 (quoting Ex. 1018, 2 (“In the WDTX, 70% oftrial dates initially relied
`
`upon by the PTAB to denypetitions haveslid.”). Petitioner’s argument that
`
`the District Court has yet to rule on a motionto transfer is moot because the
`
`motion was denied. See Pet. 70; Prelim. Resp. 11 (citing Order Denying
`
`Defendant’s Motion to Transfer (Ex. 2004)).
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`Patent Owner respondsthat the District Court trial is scheduled to
`
`start April 18, 2022, five monthsprior to the deadline for mailing a final
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`written decision if trial is instituted. Prelim. Resp. 10 (citing Ex. 1016, 4;
`
`Ex. 2001, 14 (Dkt. 72)). Patent Owner argues the five month difference is
`
`larger than those we determined were not large enough to favor denial in
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`two pending inter partes reviews between these sameparties. Jd. at 10-11
`
`(citing IPR2021-00255; IPR2021-00305). Patent Owneralso argues that
`
`other developments support the likelihoodthat trial will proceed as
`scheduled, including: a Markman hearing‘ where the April 18, 2022,trial
`
`date was confirmed; denial of Petitioner’s motion to transfer; and the
`
`4 The Markmanhearing took place on April 23, 2021, and a Claim
`Construction Order followed on June 2, 2021. See Ex. 2008.
`
`12
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`District Court’s “confidence in his court’s ability to maintain a trial
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`schedule despite his heavy caseload.” Jd. at 12-13 (citing inter alia Minute
`
`Entry from Markman Hearing (Ex. 2001), 14 (Dkt. 72); Ex. 1016, 4;
`
`Ex. 2004, 25-26). Patent Owner concludesbyciting the District Court’s
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`standing order governing patent cases, whichstates “[a]fter the trial date is
`
`set, the Court will not movethe trial date except in extremesituations.” Jd.
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`at 13 (citing Standing Order in Patent Cases (Ex. 2010), 5) (alteration in
`
`original).
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`Assuming that April 18, 2022, is in fact the scheduledtrial date and
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`that date holds, it would be approximately aslittle as three and at most five
`
`monthsprior to our expected statutory deadline for a final written decision.
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`Both parties speculate as to the likelihood that a trial date set now would
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`later be rescheduled in light of circumstances such as docket congestion and
`
`the global pandemic, with Petitioner arguing that a rescheduleis likely and
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`Patent Ownerarguing the opposite. Pet. 11-12; Prelim. Resp. 8-10.
`
`Werecognize that the Board has assessed this factor on a case-by-
`
`case basis. On one hand,in Fintiv II, the Board took the district court’s trial
`
`schedule at “face value” and declined to question it “absent some strong
`
`evidenceto the contrary.” Fintiv IT, Paper 15 at 12-13. On the other hand,
`
`in Sand Revolution, the Board was persuadedby the uncertainty in the
`
`schedule (including that caused by the parties agreeing to jointly request
`
`rescheduling ofthe trial date on several occasions) despite a scheduledtrial
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`date. Sand Revolution, Paper 24 at 8-9. Moreover, as recognized in Sand
`
`Revolution, “even in the extraordinary circumstances under whichthe entire
`
`country is currently operating because of the COVID-19 pandemic, the
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`Board continuesto be fully operational.” Jd. at 9.
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`13
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`This factor looks at the proximity of thetrial date to the date of our
`
`final decision to assess the weight to be accordeda trial date set earlier than
`
`the expected final written decision date. This proximity inquiry is a proxy
`
`for the likelihoodthat the trial court will reach a decision on validity issues
`
`before the Board reachesa final written decision. A trial set to occur soon
`
`after the institution decisionis fairly likely to happen prior to the Board’s
`
`final decision, evenif the trial date were postponed due to intervening
`
`circumstances. Given thatthe trial is currently scheduled approximately
`
`five months before the final decision, this factor weighs slightly in favor or
`
`exercising discretion to deny institution.
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`Factor 3. Investmentin the parallel proceeding by the court and the parties.
`
`If, at the time of the institution decision, the district court has issued
`
`substantive orders related to the challenged patent, such as a claim
`
`construction order, this fact weighs in favor of denial. See Fintiv, Paper 11
`
`at 9-10. On the other hand, if the district court has not issued such orders,
`
`this fact weighs against discretionary denial. /d. at 10. Moreover, in
`
`evaluating this factor, “{i]f the evidence showsthat the petitioner filed the
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`petition expeditiously, such as promptly after becoming aware of the claims
`
`being asserted, this fact has weighed against exercising the authority to
`
`deny institution under NHK.” Id. at 11 (footnote omitted).
`
`Focusing on timeliness, Petitioner argues that it filed the Petition
`
`approximately seven monthsafter service of the complaint, four months
`
`after receiving Patent Owner’s infringement contentions, and a month and a
`
`half after service of Petitioner’s preliminary invalidity contentions.
`
`Pet. 70—71 (citing “Plaintiff Koss Corporation’s Preliminary Infringement
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`14
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`Contentions” (Ex. 1014); Ex. 1016, 2-3; Fintiv J, Paper 11 at 11-12 n. 22).°
`
`Giventhat all claims, numbering sixty-two, of the ’934 patent are at issue in
`
`the District Court, Petitioner notes that the effort to draft the Petition was
`
`significant.® Jd. at 71 n.5.
`
`Patent Ownerrespondsthat “the time-consuming claim construction
`
`process is already complete.” Prelim. Resp. 14. Patent Ownerarguesthat
`
`the workload ofthe parties leading upto institution will increase with the
`
`opening of factual discovery following the Markmanhearing. Jd. at 14-15
`
`(citing Ex. 1016, 3). For example, Patent Owner argues additional time will
`
`be spent preparing “initial expert reports, which are due a mere two months
`
`after the institution decision deadline.” Jd. at 15 (citing Ex. 1016, 3).
`
`Patent Ownerargues generally that the fact that the District Court Lawsuit
`
`is in its early stages, as here, does not mean the investmentfactor favors
`
`institution. Jd. (citing Verizon Bus. Network Servs. LLC v. Huawei Techs.
`
`Co., IPR2020-01292, Paper 13 at 14-15 (PTAB Jan. 25, 2021) (substantial
`
`work involved in claim construction andinitial discovery)).
`
`Specifically, Patent Ownercites to investments in the Markman
`
`hearing, which was held on April 23, 2021, and subsequent entry of a claim
`
`construction order. Prelim. Resp. 14 (citing Ex. 2007; Ex. 2008). Patent
`
`> Petitioner’s argumentthat the District Court had not issued any
`substantive ordersis largely, if not completely, mooted by subsequent
`orders of the District Court denying Petitioner’s motion to transfer and
`entry of the Claim Construction Order. See Pet. 71.
`© The 680 and ’693 IPRsare directed to certain claims of the °934 patent
`challenged here as well as claims not challenged here. See ’680 IPR, Paper
`2, 2 (challenging claims 4, 6, 8, 12-13, 17-18, 20, 22, 38, 40-41, 49-50,
`58-62 not challenged here); ’693 IPR, Paper 2, 1-2 (challenging claims4,
`6, 8, 12, 17-18, 20, 22, 26-27, 29, 31, 38, 40-41, 44, 58-61 not challenged
`here).
`
`
`
`IPR2021-00592
`Patent 10,469,934 B2
`
`Owneralso notesthat final infringement and invalidity contentions were
`
`due June 17, 2021. Id. at 14-15 (citing Ex. 1016, 3).
`
`Patent Ownerarguesthat the four month delay after receiving
`
`preliminary infringement contentions, as well as the delay after service of
`
`the complaint and preliminary invalidity contentions, is not reasonable.
`
`Prelim. Resp. 15-16. For support, Patent Ownernotesthat in a related case
`
`we determined that a three week delay after receiving preliminary
`
`infringement contentions was reasonable. Jd. at 15 (citing ’255 IPR, Paper
`
`22 at 14).
`
`Wefind that Petitioner was expeditiousin filing its Petition. The
`
`deadline forfiling inter partes review is August 7, 2021, and the Petition
`
`wasfiled March 2, 2021, well in advance of the deadline. See Pet. 70; Ex.
`
`2003, Dkt. 1 (Complaint filed August 7, 2020); Paper 5 (according Petition
`
`filing date of March 2, 2021). As Petitioner argues, other milestones in the
`
`District Court were also closely followed by the filing of the Petition. Pet.
`
`70-71. That we have found a three week delay reasonable in the ’255 JPR
`
`does not make three weeksthe standard for reasonable delay.
`
`It was reasonable in this proceeding for Petitioner to take about four
`
`monthsafter the preliminary infringement contentions to prepare and file
`
`the Petition. “It is often reasonable for a petitioner to wait to file its petition
`
`until it learns which claimsare being asserted against it in the parallel
`
`proceeding. Thus, the parties should explain facts relevant to timing.”
`
`Fintiv, Paper 11 at 11. Patent Owneris not expectedto finally state which
`
`claimsit is asserting until after January 20, 2022. Ex. 1016, 3 (Oct. 21,
`
`2021, “Deadline for the first of two meet and confers to discuss
`
`significantly narrowing the numberofclaims asserted andprior art
`
`16
`
`
`
`IPR2021-00592
`Patent 10,469,934 B2
`
`references at issue.”), 4 (January 20, 2022, “Deadline for the second of two
`
`meet and confers to discuss narrowing the numberof claims asserted and
`
`prior art referencesat issueto triable limits.”). Petitioner has been diligent
`
`in filing its Petition prior to learning which claimsit will be facing in the
`
`District Court.
`
`Although the District Court has conducted a Markman hearing,
`
`Patent Ownerhas not explained how it might impact questions of
`
`patentability. Indeed, neither party has proposed any terms for construction
`
`in this proceeding. Pet. 4; see generally Prelim. Resp. (claim construction
`not addressed). Furthermore, the District Court did not expressly construe
`any claim term, findingall terms of the several patents asserted in the
`
`District Court Lawsuit, including the ’934 patent, are to be construed
`
`according to their “Plain and ordinary meaning.” Ex. 2008, 1-2.
`
`That final infringement and invalidity contentions have been served
`
`does not require us to find the District Court Lawsuit is at such an advanced
`
`state that institution should be denied. Even the “final” contentions are not
`
`necessarily final, as the parties have until January 20, 2022, to potentially
`
`narrow “the numberof claims asserted and prior art referencesat issue to
`
`triable limits.” Ex. 1016, 14. Regardless, service of final contentionsis just
`
`one aspect of the District Court Lawsuit andis not dispositive of the weight
`
`to be given. The close of fact discovery and expert discovery in the District
`
`Court Lawsuit is still months away. Ex. 1016, 3 (fact discovery closes
`
`November4, 2021, expert discovery closes January 20, 2022).
`
`Considerable work on fact and expert discovery still remains.
`
`Wefind the District Court Lawsuitisstill in the early stages. We
`
`base this finding in part on the significant amount of time between the
`
`
`
`IPR2021-00592
`Patent 10,469,934 B2
`
`mailing of this Decision and the close of fact discovery and expert
`
`discovery in the District Court Lawsuit. Ex. 1016, 3. Patent Ownerpoints
`
`to no other investmentby the parties or the District Court Lawsuit that has
`
`been made on the patentability issues presented here. Cf Sand Revolution,
`
`Paper 24 at 11 (“[W]e recognize that much work remainsin the district
`
`court case as it relates to invalidity: fact discovery is still ongoing, expert
`
`reports are not yet due, and substantive motion practice is yet to come.”).
`
`On the current record, weseelittle evidence of risk that we will duplicate
`
`work performed in the District Court Lawsuit, or render inconsistentresults,
`
`should we proceedtoa trial.
`
`On balance, this factor weighs against exercising our discretion to
`
`deny the Petition. Petitioner has been diligent in filing the Petition, doing
`
`so without the benefit of Patent Owner’s final identification of claims being
`
`asserted in the District Court Lawsuit. Patent Ownerpoints to no other
`
`investmentthat bears on questions of patentability or implicates risk of
`
`duplication or inconsistent results between the Board and the District Court.
`
`Factor 4. Overlap betweenissues raised in the petition and in the
`parallel proceeding.
`
`“{I]f the petition includes the sameor substantially the same claims,
`
`grounds, arguments, and evidenceas presentedin the parallel proceeding,
`
`this fact has favored denial.” Fintiv J, Paper 11 at 12. “Conversely, if the
`
`petition includes materially different grounds, arguments, and/or evidence
`
`than those presented in the district court, this fact has tended to weigh
`
`against exercising discretion to deny institution under NHK.” Id. at 12-13.
`
`Petitioner argues “the numberof claims adjudicated at the district
`
`court will likely be significantly less than the number of claims addressed
`
`here.” Pet. 72; see also District Court Order Governing Proceedings —
`
`18
`
`
`
`IPR2021-00592
`Patent 10,469,934 B2
`
`Patent Case (Ex. 1015, 10). Petitioner asks us to address claims that might
`
`be dropped fromthe District Court Lawsuit because ofthe “likelihood of
`
`these unaddressed claims being reasserted against future products.” Pet. 72.
`
`In the District Court Lawsuit, Petitioner stipulates that
`
`if the Patent Trial and Appeal Board (PTAB)institutes this
`petition on the grounds presented, then the Defendant, Apple Inc.
`(“Apple”), will not seek resolution within this litigation of any
`ground of invalidity that utilizes, as a primary reference, PCT
`Application Publication No. WO 2006/042749
`(or
`any
`translation thereof) (“Haupt”), which is the primary reference in
`the groundsasserted in the IPR petition.
`
`Letter between counsel in the District Court Lawsuit dated March 2, 2021
`
`(Ex. 1020) (“Stipulation’’). Petitioner argues the Stipulation “eliminate[s]
`
`any doubtas to the absence of meaningful overlap between the
`
`proceedings.” Pet. 72.
`
`Patent Ownerasserts there is the “potential for significant overlap
`
`between the references.” Prelim. Resp. 16. Patent Owner acknowledges
`
`that its Preliminary Infringement Contentions (Ex. 1014) “preliminarily
`
`asserted all 62 claims of the °934 Patent [Ex. 1014, 3] and the Petition
`
`challenges only a subset of those claims.” Prelim. Resp. 16. Nonetheless,
`
`citing a six pagelisting of prior art references listing over 200 separate
`
`references from Petitioner’s “Preliminary Invalidity Contentions,”
`
`(Ex. 2013), Patent Owner contendsthat Petitioner asserted “Haupt ’209
`
`[Ex. 2009] anticipates and/or renders obvious the asserted claims of the
`
`°934 Patent.” Jd. at 17 (citing Ex. 2013, 2-8 (Haupt ’209 listed at 8)). The
`
`translation of Haupt from Exhibit 1004is relied on to challenge the claims
`
`here. See Section II.E above. Thus, Exhibits 1004 and 2009 are different
`
`translations of the same reference, Haupt. Save minordifferences in
`
`translation from German to English, we find the two exhibits to be
`
`19
`
`
`
`IPR2021-00592
`Patent 10,469,934 B2
`
`substantially identical. See Section HI.B below. While we have not been
`
`provided a copy of Petitioner’s Final Invalidity Contentions, Patent Owner
`
`arguesthatfiling also has the potential to assert the Exhibit 1004 translation
`
`of Haupt. Jd.
`
`Patent Ownerarguesthat the Stipulation is insufficient for two
`
`reasons. Prelim. Resp. 17—20. First, Patent Ownernotes the Stipulation
`
`does not encompassothertranslations of Haupt or other referencesthat are
`
`“substantively identical” to Haupt. Id. at 17-18. Second, Patent Owner
`
`argues the characterization of Haupt (Ex. 1004) as a primary reference does
`
`not preclude duplication of effort between this proceeding and the District
`
`Court Lawsuit because the distinction is an arbitrary label which allows
`
`Petitioner to argue for institution on one hand and onthe other “reserve
`
`maximum latitude to present obviousness arguments in the [District Court
`
`Lawsuit] simply by labeling Haupt as a ‘secondary reference.’” Id. at 18-
`
`19 (citing Jn re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) “primary”
`
`versus “secondary” reference designations are “merely a matter of
`
`presentation without legal significance.”). Patent Owner concludes by
`
`contending that the Stipulation should be givenlittle weight becauseit “is
`
`not as encompassingas thestipulation in Sotera Wireless, Inc. v. Masimo
`
`Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020).” Jd. at 19.
`
`Accor
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