Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Entered: October 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BOSE CORP.,
`Petitioner,
`
`V.
`
`KOSS CORP.,
`Patent Owner.
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`Before KARL D. EASTHOM, PATRICK R. SCANLON,and
`DAVID C. McCKONE,Administrative Patent Judges.
`
`EASTHOM,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314
`
`
`571-272-7822
`
`Paper 15
`Entered: October 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BOSE CORP.,
`Petitioner,
`
`V.
`
`KOSS CORP.,
`Patent Owner.
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`Before KARL D. EASTHOM, PATRICK R. SCANLON,and
`DAVID C. McCKONE,Administrative Patent Judges.
`
`EASTHOM,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`I.
`
`INTRODUCTION
`
`Bose Corp.(“Petitioner”) filed a Petition (Paper2, “Pet.”) requesting
`
`an inter partes review of claims 1-22, 32-41, 47, and 49-62 of U.S. Patent
`
`No. 10,469,934 B2 (Ex. 1001, “the ’934 patent”). Koss Corp. (“Patent
`
`Owner’’) filed a Preliminary Response (Paper 10,“Prelim. Resp.”).
`
`Thereafter, Petitioner filed an authorized Preliminary Reply (Paper11,
`
`“Prelim. Reply”), and Patent Ownerfiled an authorized Preliminary Sur-
`
`reply (Paper 12,“Prelim. Sur-reply”). See Ex. 3001 (authorizing email).
`
`Wehaveauthority to determine whetherto institute an inter partes
`
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To
`
`institute an interpartes review, we must determinethat the information
`
`presented in the Petition shows“a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine
`
`that the information presented in the Petition establishes a reasonable
`
`likelihood that Petitioner will prevail with respect to at least one challenged
`
`claim. Accordingly, we institute an inter partes review of the ’934 patent.
`
`lf. BACKGROUND
`
`A. Real Parties in Interest
`
`Theparties identify themselvesas the real parties in interest. Pet. xix;
`
`Paper3, 1.
`
`B. Related Matters
`
`Theparties identify the following proceedings as related matters
`
`involving the ’934 patent:
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`Koss Corp. v. Bose Corp., No. 6:20-cv-00661 (W.D. Tex.) (the “Bose
`Litigation”) (dismissed);!
`
`Koss Corp. v. Plantronics, Inc., No. 6:20-cv-00663 (W.D. Tex.)
`(transferred to N.D. Cal.);
`
`Koss Corp. v. Skullcandy, Inc., No. 6:20-cv-00664 (W.D. Tex.)
`(dismissed);
`
`Koss Corp. v. Apple Inc., No. 6:20-cv-00665 (W.D. Tex.) (the “Apple
`Litigation’’);
`
`Bose Corp. v. Koss Corp., No. 1:20-cv-12193 (D. Mass.);
`
`Apple Inc. v. Koss Corp., No. 4:20-cv-05504 (N.D. Cal.);
`
`Apple Inc. v. Koss Corp., No. 6:21-cv-00495 (W.D. Tex.); and
`
`Koss Corp. v. Skullcandy, Inc., No. 2:21-cv-00203 (D. Utah).
`
`Pet. xx—xxi; Paper 3, 1; Paper 5, 1; Paper7, 2.
`
`In addition,the parties identify the following inter partes review
`
`proceedingschallenging the 934 patent or patents related to the ’934 patent
`
`as related matters:*
`
`Bose Corp. v. Koss Corp., 1PR2021-00297,filed December 7, 2020,
`challenging U.S. Patent No. 10,368,155 B2;
`
`Apple Inc. v. Koss Corp., {PR2021-00305, filed December 15, 2020,
`challenging U.S. Patent No. 10,506,325 B1;
`
`Apple Inc. v. Koss Corp., JPR2021-00381, filed January 4, 2021,
`challenging U.S. Patent No. 10,491,982 B1;
`
`Bose Corp. v. Koss Corp., 1PR2021-00546,filed February 22, 2021,
`challenging U.S. Patent No. 10,206,025 B2;
`
`Apple Inc. v. Koss Corp., 1PR2021-00592, filed March 2, 2021,
`challenging U.S. Patent No. 10,469,934 B2;
`
`1 Ex. 2003.
`? Apple Inc. v. Koss Corp., 1PR2021-00255, filed November 25, 2020, and
`Apple Inc. v. Koss Corp., 1PR2021-00600, filed March 7, 2021, both
`challenging U.S. Patent No. 10,298,451 B1, are also pending.
`
`3
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`Bose Corp. v. Koss Corp., 1PR2021-00612, filed March 3, 2021,
`challenging U.S. Patent No. 10,206,025 B2;
`
`Apple Inc. v. Koss Corp., {PR2021-00626, filed March 17, 2021,
`challenging U.S. Patent No. 10,206,025 B2;
`
`Apple Inc. v. Koss Corp., 1PR2021-00679,filed March 22, 2021,
`challenging U.S. Patent No. 10,506,325 B1;
`
`Apple Inc. v. Koss Corp., 1PR2021-00686,filed March 22, 2021,
`challenging U.S. Patent No. 10,491,982 B1; and
`
`Apple Inc. v. Koss Corp., IPR2021-00693, filed March 23, 2021,
`challenging U.S. Patent No. 10,469,934 B2.
`
`Pet. xx; Paper 3, 1; Paper 5, 1; Paper7, 2.
`
`C. The ’934 Patent
`
`The ’934 patent,titled “System with Wireless Earphones,” issued
`November 5, 2019, with claims 1-62, and claimspriority through several
`applications dating to April 7, 2008.° Ex. 1001, codes (45), (54), (60), (63),
`
`1:3-30, 18:2-25:23. The ’934 patentrelates to “a wireless earphonethat
`
`comprises a transceivercircuit for receiving streaming audio from a data
`
`source, such asadigital audio player or a computer, over an ad hoc wireless
`
`network.” Jd. at 1:67—2:3. The ’934 patent defines an “ad hoc wireless
`
`network”as “a network where two (or more) wireless-capable devices, such
`
`as the earphone and a data source, communicate directly and wirelessly,
`
`without using an access point.” Jd. at 3:3-6. Some embodiments include
`
`two discrete wireless earphones, one in each ear. Jd. at 3:47-48.
`
`3 Petitioner asserts that “the references are prior art” even “i]f the claims are
`entitled to the earliest claimed priority—April 7, 2008.” See Pet.3.
`
`4
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`Figure 2A of the 934 patent follows:
`
`
`AD HOC WIRELESS
`NETWORK
`
`
`DAIA SOURCE
`
`
`FIG. 2A
`
`Figure 2A illustrates wireless earphone 10 connected via ad hoc wireless
`
`network 24 to data source 20. Ex. 1001, 4:26—28. “[D]ata source 20 may be
`
`a digital audio player (DAP), such as an [MP]3 player or an iPod, or any
`
`other suitable [DAP] device, such as a laptop or personal computer, that
`
`stores and/or plays digital audio files.” Jd. at 4:32—36. “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 Wi-Fi, Bluetooth, and other communication protocols. Jd. at
`
`4:56-61.
`
`In one embodiment, earphone 10 connects to network-enabled host
`
`server 40 via networks 30a, 42 so that host server 40 can transmit streaming
`
`digital audio to earphone 10. Ex. 1001, 5:56—62, Fig. 2D. Alternatively,
`
`host server 40 may transmit a network address to earphone 10 for streaming
`
`digital audio content server 70. Jd. at 5:62—65, Fig. 2D. In this case,
`
`earphone 10 usesthe received address to connect to content server 70 via
`
`networks 30a, 42 and receive digital audio from content server 70. Id. at
`
`5:66-6:2. In one embodiment, content server 70 is an Internet radio station
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
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`server. Id. at 6:3-4. In addition, content server 70 may stream digital audio
`
`that it has received from data source 20 via networks 30b, 42. Id. at 6:7—12.
`
`Figure 3, reproduced below,depicts a block diagram of earphone 10
`
`(Ex. 1001, 2:31-32):
`
`102
`
`¢
`
` i
`
`VOLATILE
`MENORY
`
`FIG. 3
`
`As Figure 3 shows, earphone 10 includestransceiver circuit 100, power
`
`source 102, microphone 104, acoustic transducer 106 (e.g., a speaker), and
`
`antenna 108. Jd. at 6:30-35. The body of earphone 10 housestransceiver
`
`circuit 100, power source 102, and acoustic transducer 106 in some
`
`embodiments, with microphone 104 and antenna 108 external to the body.
`
`Id. at 6:33-40.
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`D.
`
`Illustrative Claim
`
`Claim 1, the sole independent claim of the challenged claims,is
`
`reproduced below:
`
`[1A] A headphone assembly comprising:
`[1B] first and second earphones, wherein each ofthe first and
`second earphones comprises an acoustic transducer; and
`[1C] an antenna for receiving wireless signals from a mobile,
`digital audio player via one or more ad hoc wireless
`communication links;
`
`[1D] a wireless communication circuit connected to the antenna,
`wherein the wireless communication circuit is for receiving and
`transmitting wireless
`signals
`to and from the headphone
`assembly;
`
`[1E] a processor;
`[1F] a memory for storing firmware that is executed by the
`processor;
`[1G] a rechargeable battery for powering the headphone
`assembly; and
`[1H] a microphonefor picking up utterances by a user of the
`headphone assembly;
`[11] 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;
`[1J] wherein the processoris configured to, upon activation of a
`user-control of the headphone assembly,initiate transmission of
`a request
`to a remote, network-connected server that
`is in
`wireless communication with the mobile, digital audio player;
`[1K] and wherein the headphone assembly is for receiving
`firmware upgrades transmitted from the remote, network-
`connected server.
`
`Ex. 1001, 18:2—33 (bracketed nomenclature added to conform to Petitioner’s
`
`formatto identify each claim limitation). See Pet. 5—6.
`
`
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`IPR2021-00680
`Patent 10,469,934 B2
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner contendsthat the challenged claims would have been
`unpatentable on the following grounds:*
`
`Claim(s) Challenged
`
`Reference(s)/Basis
`
`0 0
`
`
`
`3(a
`
`)
`
`0
`
`0
`
`3(a
`
`
`
`
`
`
`1-3, 5, 7, 9-11, 32-37, 39, 47,
`5
`-
`6
`49, 51-57 103(a)|Schrager,’ Goldstein
`
`
`A, 6, 8, 12, 13, 38, 40, 41, 58-62|103(a)|Schrager, Goldstein, Harada’
`
`
`14-16, 19, 21, 49-51 103(a)|Schrager, Goldstein, Skulley®
`
`Schrager, Goldstein, Skulley,
`Rezvani-446,9 Rezvani-875,!°
`1-3, 5, 7, 9-11, 14-16, 19, 21,
`
`47, 49-53 )|skulley, Hind"!
`4, 6, 8, 12-13, 17-18, 20, 22,
`1
`) Rezvani-446, Rezvani-875,
`58-62
`Skulley, Hind, Harada
`Rezvani-446, Rezvani-875,
`32-37, 39, 54-57 103(@)|Oh Hind
`Rezvani-446, Rezvani-875,
`38, 40, 41 103(@)|Oh Hind, Harada
`
`
`
`
`
`
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (‘AIA”), amended 35 U.S.C. § 103. Because the ’934 patent’s
`effective filing date precedes the March 16, 2013, effective date of the
`applicable AIA amendments, the pre-AIA version of 35 U.S.C. § 103
`applies.
`> US 7,072,686 B1, issued July 4, 2006 (Ex. 1101).
`6 US 2008/0031475 Al, published Feb. 7, 2008 (Ex. 1026).
`7US 2006/0229014 Al, published Oct. 12, 2006 (Ex. 1098).
`8 US 6,856,690 B1, issued Feb. 15, 2005 (Ex. 1017).
`° US 2007/0136446 Al, published June 14, 2007 (Ex. 1097).
`0 US 2007/0165875 Al, published July 19, 2007 (Ex. 1016).
`"US 7,069,452 B1, issued June 27, 2006 (Ex. 1019).
`2 WO 2006/098584 A1, published Sept. 21, 2006 (Ex. 1099).
`
`8
`
`
`
`TPR2021-00680
`Patent 10,469,934 B2
`
`Pet. 2-3. Petitioner supportsits challenge with the Declaration of Tim A.
`
`Williams, Ph.D. (Ex. 1003) and the Declaration of John G. Casali, Ph.D.,
`
`CPE(Ex. 1005).
`
`Ill. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`
`Determining whether an invention would have been obvious under 35
`
`U.S.C. § 103 requires resolving the level of ordinary skill in the pertinentart
`
`at the time ofthe effective filing date of the claimed invention. Graham v.
`
`John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the
`
`art is a hypothetical person who knowsthe relevantart. In re GPAC,Inc.,
`
`57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors in determiningthe level of
`
`ordinary skill in the art include the types of problems encounteredin theart,
`
`the sophistication of the technology, and educationallevel of active workers
`
`in the field. Jd. One or more factors may predominate. Id.
`
`Petitioner contends that a person having ordinary skill in the art
`
`“would have had backgroundin wireless networks, including at least a
`
`bachelor’s degree in electrical engineering or a related field and experience
`
`with wireless networks, and would have worked on a team including
`
`members with headphone-design experience.” Pet. 6 (citing Ex. 1003
`
`{1 30-37; Ex. 1005 97 41-45). Patent Owner does not dispute Petitioner’s
`
`proposedlevel of ordinary skill in the art in its Preliminary Response, nor
`
`doesit propose a different level of skill.
`
`Based on our review ofthe record, Petitioner’s stated level of ordinary
`
`skill in the art is reasonable becauseit is consistent with the evidence of
`
`record, including the asserted prior art. Accordingly, for the purposesofthis
`
`Institution Decision, we adopt Petitioner’s definition.
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`B. Claim Construction
`
`In inter partes reviews, the Board interprets claim language using the
`
`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under
`
`that standard, claim terms havetheir ordinary and customary meaning,as
`
`would be understood by a person of ordinary skill in the art at the time of the
`
`invention,in light of the language of the claims, the specification, and the
`
`prosecution history. See Phillips, 415 F.3d at 1313-14. Any extrinsic
`
`evidence should be considered in the context of the intrinsic evidence. See
`
`id. at 1317-19.
`
`Petitioner asserts that because “the prior art plainly discloses claim
`
`elements, express construction is unnecessary.” Pet. 7-8 (citing Nidec
`
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`
`(Fed. Cir. 2017)).
`
`Patent Owneralso does not discuss claim construction explicitly in a
`
`separate claim construction section. See generally Prelim. Resp. However,
`
`addressing Petitioner’s grounds, Patent Ownerarguesthat claim 1 “specifies
`
`that the remote, network-connected serveris in wireless communication
`
`with the mobile DAP.” Id. at 26. In pertinentpart, claim 1 recites “ {a]
`
`headphone assembly comprising .
`
`.
`
`. a processor...
`
`[1J] wherein the
`
`processoris configuredto .
`
`.
`
`. initiate transmission of a request to a remote,
`
`network-connected server that is in wireless communication with the mobile,
`
`[DAP].” Notwithstanding Patent Owner’s argumentand Petitioner’s
`
`showingthat alleges the obviousnessof a server wirelessly connected to a
`
`DAP (see infra §§ III.D.3, IL.F.4), neither party addresses how a processor
`
`configured to initiate the claimed transmission to a serveris structurally
`
`different from the same processor configuredto initiate the claimed
`
`10
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`
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`IPR2021-00680
`Patent 10,469,934 B2
`
`transmission to the sameserverthat is in turn connected wirelessly to a
`
`DAP. But see In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is
`
`well settled that the recitation of a new intended use for an old product does
`
`not makea claim to that old product patentable.”); In re Anderson, 662 F.
`
`App’x 958, 963 (Fed. Cir. 2016) (nonprecedential) (“We also agree with the
`
`Boardthat the ‘for use’ claim language is a statement of intended use. The
`
`‘for use’ language does not add a structural limitation to the claimed system
`
`or method.”); ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361
`
`(Fed. Cir. 2018) (“[A] prior art reference may anticipate or render obvious
`
`an apparatus claim—dependingonthe claim language—ifthe reference
`
`discloses an apparatus that is reasonably capable of operating so as to meet
`
`the claim limitations ....”).
`
`Atthis preliminary stage, no need exists to construe explicitly any
`
`claim language because doing so would havenoeffect in the analyses below
`
`of Petitioner’s asserted grounds and will not assist in resolving the present
`
`controversy between the parties. See Nidec Motor, 868 F.3d at 1017 (stating
`
`that “we need only construe terms ‘that are in controversy, and only to the
`939
`
`extent necessary to resolve the controversy’”
`
`(quoting Vivid Techs., Inc.v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`C. Discretion Under 35 U.S.C. § 314(a)
`
`Patent Owner argues that we should exercise discretion to deny
`
`institution under 35 U.S.C. § 314(a) in view of the Bose Litigation and the
`
`Apple Litigation. Prelim. Resp. 7—22; Prelim. Sur-reply. Petitioner
`disagrees. Pet. 99-102; Prelim. Reply. As noted above, the Bose Litigation
`
`has been dismissed. Ex. 2003. Accordingly, the analysis below focuses on
`
`the Apple Litigation.
`
`11
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`
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`IPR2021-00680
`Patent 10,469,934 B2
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`Institution of an inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a) (authorizing institution of an inter partes review underparticular
`
`circumstances, but not requiring institution under any circumstances);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.”); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018)
`
`(“[Section] 314(a) invests the Director with discretion on the question
`
`whetherto institute review ... .” (emphasis omitted)); Harmonic Inc. v. Avid
`
`Tech., Inc., 815 F.3d at1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`
`permitted, but never compelled, to institute an IPR proceeding.”).
`
`An advancedstate of a parallel district court proceedingis a “factor
`
`that weighs in favor of denying the Petition under § 314(a).” NHK Spring
`
`Co. v. Intri-Plex Techs., Inc., 1PR2018-00752, Paper 8 at 20 (PTAB Sept.
`
`12, 2018) (precedential) (“NHK”). Specifically, an early trial date is part of
`
`a “balanced assessmentofall relevant circumstancesin the case, including
`
`the merits.” Consolidated Trial Practice Guide November 2019 (“TPG”)?
`
`at 58. This balanced assessment involves consideration of the following
`
`factors:
`
`1. whether the court granted a stay or evidence exists
`that one may be granted if a proceedingis instituted;
`
`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`
`investmentin the parallel proceeding by the court and
`3.
`the parties;
`
`4. overlap betweenissues raised in the petition andin the
`parallel proceeding;
`
`13 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`12
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`TPR2021-00680
`Patent 10,469,934 B2
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`5. whetherthe petitioner and the defendant in the parallel
`proceeding are the same party; and
`
`6. other circumstances that impact the Board’s exercise
`of discretion, including the merits.
`
`Apple Inc. v. Fintiv, Inc.,PR2020-00019, Paper 11 at S-6 (PTAB Mar. 20,
`
`2020) (precedential) (“Fintiv”). We address each factor below.
`
`1. Factor 1: whether the court granted a stay or evidence exists that one
`may be granted ifa proceedingis instituted
`
`Petitioner argues that there is no “‘specific evidence’ howthe [District
`
`Court] will rule regarding a stay” and in any event, Petitioner does not have
`
`a “significant relationship” with Apple so that this factor weighs against
`
`denial. Pet. 97 (citing Sand Revolution II v. Continental Intermodal Group—
`
`Trucking, IPR2019-01393, Paper 24, 7 (June 16, 2020) (informative)), 100
`
`(arguing that “Bose and Apple have no Valve-like ‘significant relationship,’
`
`as they are competitors accused of infringement based on different,
`competing products).'4 Petitioner also states it is unknownif the District
`
`Court will grant a stay. Prelim. Reply 1.
`
`Patent Ownerdoesnotargue that Petitioner has any relationship with
`
`Apple. Patent Owner argues that Apple has not filed any motionsto stay in
`
`the Apple Litigation and contendsthat it is unlikely the presiding judge in
`
`the Apple Litigation would grant such a motionif filed. Prelim. Resp. 9-10
`
`(citing Ex. 2002; Ex. 2017).
`
`The record indicates that no stay exists at present in the Apple
`
`Litigation. We decline to speculate on the likelihood of a stay if Apple were
`
`14 See Valve Corp. v. Electronic Scripting Products, Inc., TPR2019-00062,
`Paper 11 at 9 (PTAB April 2, 2019) (precedential) (“Valve IP’) ([W]hen
`different petitioners challenge the same patent, we consider any relationship
`between those petitioners when weighing the General Plastic factors.”).
`
`13
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`
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`IPR2021-00680
`Patent 10,469,934 B2
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`to file a motion after this Decision. Petitioner is not a party to the Apple
`
`Litigation. See Owens Corning Roofing & Asphalt, LLC v. Kirsch Research
`
`& Dev., LLC, IPR2020-01389, Paper 11 at 11 (PTAB Feb. 18, 2021)
`
`(determining Fintiv factors 1 and 2 weighed strongly against exercise of
`
`discretion where the petitioner was not alleged to be a party to parallel
`
`litigation scheduled fortrial prior to the projected Final Written Decision
`
`deadline but was instead a defendantin a separate litigation that did not have
`
`a set trial date). No evidenceofa significant relationship between Apple
`
`and Petitioner exists on this record. This factor weighs strongly against
`
`exercising our discretion to denyinstitution.
`
`2. Factor 2: proximity ofthe court’s trial date to the Board’s projected
`statutory deadlinefor a final written decision
`
`Theparties agree that the District Court set trial to begin in the Apple
`
`Litigation on April 18, 2022, which is approximately six months before a
`
`final written decision would issue in this proceeding. See Pet. 97 (citing Ex.
`
`1082); Prelim. Resp. 10-11 (citing Ex. 2016, 4; Ex. 2002, 15; Ex. 2017, 8).
`
`Both parties speculate as to the likelihood that this trial date will be
`
`rescheduled in light of circumstances such as docket congestion and the
`global pandemic, with Petitioner arguingthat a delay is likely and Patent
`Ownerarguing the opposite. Pet. 92-93; Prelim. Resp. 11-13.
`
`The Boardhas assessed this factor on a case-by-case basis. On one
`
`hand, the Board has takenthe district court’s trial schedule at “face value”
`
`and declined to question it “absent some strong evidenceto the contrary.”
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12-13 (PTAB May
`
`13, 2020) (informative). On the other hand, the Board has been persuaded
`
`by the uncertainty in the schedule (including that caused by the parties
`
`agreeing to jointly request rescheduling ofthe trial date on several
`
`14
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`occasions) despite a scheduledtrial 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 Board continuesto be fully operational.”
`
`Id. at 9.
`
`This factor looks at the proximity ofthetrial 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 likelihood that 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 dueto intervening
`
`circumstances. Giventhat thetrial is currently scheduled for more than
`
`seven months from institution and approximately five months before the
`
`final decision, the efficiency and system integrity concerns that animate the
`
`Fintiv analysis are present but not strong.
`
`Furthermore, as noted above, Petitioner is not a party to the Apple
`
`Litigation. The Board has found that Fintiv factor 2 weighed strongly
`
`against exercise of discretion in similar circumstances. See Owens Corning,
`
`Paper 11 at 11. Accordingly, this factor weighs strongly against exercising
`
`our discretion to deny institution.
`
`3. Factor 3:
`
`investmentin the parallel proceeding by the court
`and the parties
`
`If, at the time ofthe 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,
`
`15
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`
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`IPR2021-00680
`Patent 10,469,934 B2
`
`this fact weighs against discretionary denial. Jd. at 10. Moreover,in
`evaluating this factor, “[i]f the evidence showsthat the petitioner filed the
`petition expeditiously, such as promptly after becoming awareofthe claims
`being asserted, this fact has weighed against exercising the authority to deny
`
`institution under NHK.” Id. at 11.
`
`Patent Ownerarguesthat the claim construction process is complete
`
`in the Apple Litigation. Prelim. Resp. 14 (citing Ex. 2002, 14; Ex. 2018).
`
`Patent Owneralso points out that fact discovery opened on April 23, 2021,
`
`and closes on November4, 2021, andfinal infringement and invalidity
`
`contentions were due on July 16, 2021. Jd. (citing Ex. 2016, 3; Ex. 2017, 6—
`
`7). In addition, Patent Ownerasserts that, at the time of this Institution
`
`Decision, thelitigants are likely to have spent considerable resources
`
`preparing initial expert reports, which are due on November19, 2021. Id.
`(citing Ex. 2016, 3; Ex. 2017, 6-7). Petitioner responds that much work
`
`remains in the Apple Litigation, asserting that dispositive motionsare not
`
`due until four monthsafter the date of this Institution Decision. Prelim.
`
`Reply.3.
`
`Onthe current record, the Apple Litigationis still in the early stages,
`
`with very little investment pertaining to the invalidity issues raised in the
`
`Petition. Although the court has conducted a Markmanhearing, Patent
`
`Ownerdoesnot indicate whatrelationship the claim construction disputes in
`
`the Apple Litigation have to the patentability issues presented in this
`proceeding. Fact discovery is not complete, and expert discovery has not
`
`started. Ex. 1082, 3. Patent Ownerpoints to no other investment by the
`
`parties or the court in the Apple Litigation toward 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
`
`16
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
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`discovery is still ongoing, expert reports are not yet due, and substantive
`
`motion practice is yet to come.”). On the current record,little evidence of
`
`risk exists of duplicating work performedin, or rendering inconsistent
`
`results with, the Apple Litigation.
`
`For the above reasons,this factor weighs against exercising our
`
`discretion to deny institution.
`
`4. Factor 4: overlap between issues raised in the petition and in the
`parallel proceeding
`
`Although Patent Owner arguesthat the validity issues in the Apple
`
`Litigation “significant[ly] overlap” those raised in the instant Petition, Patent
`
`Owner merely points to Apple’s use of Rezvani-875 as “one (andthefirst)
`
`of only four references for which Apple provided charts for the 934
`
`[p]atent.” See Prelim. Sur-Reply 3 (citing Ex. 2022, 1; Ex. 2030, 25
`
`(arguing that “Exhibit C1—C4 to Apple’s invalidity contentions are Apple’s
`
`charts for the °934 Patent”)). As Petitioner argues, however, Patent Owner
`
`fails to show much morethan a possibility of some overlap. See Prelim.
`
`Reply 5 (“[Patent Owner] speculates Apple will rely on Rezvani-875, butit
`
`is one of 200+ references in Apple’s invalidity contentions and Apple’s trial
`
`strategy is unknown.”) (citing Ex. 2030, 1-7).
`
`Apple’s invalidity chart referenced by Patent Owner doesnot
`
`represent Apple’s final invalidity theory, because the District Court’s
`
`deadline for narrowing the numberof claims asserted and the priorart
`
`references is October 21, 2021. See Ex. 1082, 3; Prelim. Resp. 16 (agreeing
`
`that the Apple Litigation is “subject to possible narrowing.”). As an
`
`example of changes, Apple’s District Court chart relied upon by Patent
`
`Ownerimplies a challengeto all 62 claims based on Patent Owner’s
`
`infringementassertions, but the parties agree that Petitioner challenges 17
`
`17
`
`
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`IPR2021-00680
`Patent 10,469,934 B2
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`claims here that Patent Owner doesnotassert against Apple in the District
`
`Court. See PO Resp. 16 (citing Ex. 2023, 2); Prelim. Reply 4 & n.4 (listing
`
`claims 9, 10, 14, 32-35, and 49-57).!> Petitioner contendsthat this lack of
`
`overlap as to these 17 claimsit challenges here in relation to the claims not
`
`involved in the Apple Litigation prejudices Petitioner as to those claims.
`
`Prelim. Reply 4-5.
`
`ThePetition’s chart above (§ II.E) reveals that Petitioner only
`employs Rezvani-875in half the grounds. As Patent Owner recognizes,
`
`Apple’s District Court chart based on Rezvani-875 is only one of four charts
`
`that Apple filed in the District Court with respect to the 934 patent, Apple’s
`
`invalidity theories are subject to narrowing so that Apple may notrely on
`
`Rezvani-875, and in any event, the Apple Litigation will not address 17
`
`challenged claimsat issue here and that Patent Ownerasserted against
`
`Petitioner in the Bose Litigation. See Prelim. Sur-Reply 3; Prelim. Reply 4
`
`&n.4. Accordingly, Patent Owner’s assertions of overlap amountto
`
`showinga possibility of only some overlap by Apple, whois notaffiliated
`
`with Petitioner. For these reasons, this factor weighs against exercising our
`
`discretion to deny institution.
`
`5. Factor 5: whether the petitioner and the defendantin the parallel
`proceeding are the same party
`
`Thereis no dispute that Petitioner is not a defendant in the Apple
`
`Litigation. However, “[e]ven whena petitioner is unrelated to a
`
`15 Patent Ownerasserts that Apple’s final invalidity contentions “are due the
`dayafter the filing” of the Preliminary Response(filed July 15, 2021).
`Prelim. Resp. 16-17. Nevertheless, Patent Owner’s Preliminary Sur-reply
`(filed Aug. 23, 2021) does not contend that Apple filed final invalidity
`contentions. See Prelim. Sur-Reply 5 (pointing out that Petitioner argues “it
`will be harmedif institution is denied”).
`
`18
`
`
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`IPR2021-00680
`Patent 10,469,934 B2
`
`defendant, .
`
`.
`
`. if the issues are the same as, or substantially similarto, those
`
`already or about to belitigated .
`
`.
`
`. the Board may, nonetheless, exercise the
`
`authority to deny institution.” Fintiv, Paper 11 at 14. As discussed abovein
`
`connection with factor 4, the current record only showsa possibility that
`
`someissues, but notall, will be the same as or substantially similar to, the
`
`issues raised in the Apple Litigation. Accordingly,this factor weighs against
`
`exercising discretion to deny institution.
`
`6. Factor 6: other circumstances that impact the Board’s exercise of
`discretion, including the merits
`
`The factors considered in the exercise of discretion are part of a
`
`balanced assessmentof all the relevant circumstancesin the case, including
`
`the merits. Fintiv, Paper 11 at 14. For example, if the merits of a ground
`
`raised in the petition seem particularly strong on the preliminary record, this
`
`fact has favoredinstitution. Jd. at 14-15. By contrast, if the merits of the
`
`groundsraisedin the petition are a closercall, then that fact has favored
`
`denying institution when other factors favoring denial are present. Jd. at 15.
`In Sand Revolution, the panel determined that this factor weighed in favor of
`
`not exercising discretion whenthe petitioner had “set forth a reasonably
`
`strong case for the obviousness of most challenged claims.” Sand
`
`Revolution, at 13. Here, Patent Ownerarguesthat the asserted grounds “are
`
`not strong” and should be denied on the merits. Prelim. Resp. 19-20;
`
`Prelim. Sur-reply 5. Petitioner, on the other hand, argues that the merits of
`
`its arguments are strong. Pet. 102; Prelim. Reply 5.
`
`For the reasons discussed below regarding Petitioner’s obviousness
`
`challenges, Petitioner’s challenges based on § 103 are at least reasonably
`strong. For example, the current record showsthat the combination of
`Schrager and Goldstein and the combination of Rezvani-446, Rezvani-875,
`
`19
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`
`
`IPR2021-00680
`Patent 10,469,934 B2
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`Skulley, and Hind, would have rendered claim 1 obvious. See infra §§ III.D,
`
`I.F. Accordingly, this factor weighs against exercising discretion to deny
`
`institution.
`
`7. Conclusion
`
`The Board takes “‘a holistic view of whetherefficiency and integrity
`
`of the system are best served by denyingorinstituting review” under
`
`§ 314(a) when evaluating the Fintiv factors. Fintiv, Paper 11, 6. Evaluating
`
`all of the factors on this record, we determine that the circumstances here do
`
`not support exercising our discretion under § 314(a) to deny institution of
`
`inter partes review.
`
`D. Ground 1A: Asserted Obviousness Based on Schrager and Goldstein
`
`Petitioner asserts that claims 1-3, 5, 7, 9-11, 32-37, 39, 47, 49, and
`
`51-57 are unpatentable under 35 U.S.C. § 103(a) based on Schrager and
`
`Goldstein. Pet. 8-28. Patent Ownerdisagrees. Prelim. Resp. 23-37.
`
`I. Schrager
`
`Schrager discloses “a portable electronic device which can include
`
`one or more of an AM/FMradio, a music player, a short distance radio, a
`
`voice memo pad,a cellular telephone, a global positioning system (GPS)
`
`receiver, an AM/FMradiointerface, and a transponder.” Ex. 1101, 4:55-59.
`
`Eachof these units can be operated in a hands-free manner via voice
`
`commands. Jd. at 4:60-62.
`
`20
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`Figure 1 of Schrager follows:
`
`HeadsetUnit
`
`100
`
`Transducive
`Element
`
`105
` 125 Speaker
`
`120
`
`130
`
`
`Processor
`
`
`
`Wireless
`Transceiver
`135
`
`Wireless
`Transceiver
`
`
`
`
`
`199
`
`AMIEM Radio
`inierface
`19?
`
`
`
`
`GPS Reseiver
`175
`
`FIG. 1
`
`Figure 1 is a schematic diagram illustrating voice-controlled multimedia and
`
`communications device 100. Ex. 1101, 4:38—40, 4:66—5:2. Device 100
`
`includes headsetunit 105 and base unit
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