Case 6:20-cv-00665-ADA Document 161 Filed 03/23/22 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`KOSS CORPORATION,
` Plaintiff,
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`v.
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`APPLE INC.,
` Defendant.
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`DISCOVERY DISPUTE ORDER
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`Case No. 6:20-cv-00665-ADA
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`The parties submitted the following discovery dispute to the Court via email.
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`Apple’s Statement
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`Apple served a targeted Request for Production (No. 42) seeking Board of Director meeting
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`minutes from the timeframe covering the “STRIVA” project that Koss claims reflects the
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`inventors’ work. Koss refuses to produce a handful of meeting minutes prepared by its CEO and
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`named inventor, even though he testified those minutes described the inventors’ work and were
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`prepared only four to five times per year. Koss has also refused to produce documents about its
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`licensing negotiations, even though it represented in response to Apple’s Interrogatory No. 2 that
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`it would produce them pursuant to Rule 33(d).
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`Issue #1: Board of Director Minutes
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`Apple’s Request for Production 42 seeks board of directors meeting minutes generated
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`during Koss’ “STRIVA” project (approximately 2007–2014), the project that Koss contends forms
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`the basis of the Patents-in-Suit. Koss produced one set of minutes (dated January 2008), which
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`include lengthy statements by its CEO and named inventor, Michael Koss, Sr., about the inventors’
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`work on “STRIVA” and related technologies. (KOSS_027349.) Mr. Koss testified that the
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`unproduced minutes also “likely” discussed the STRIVA project. (Koss Sr. Dep. 205:2–5.)
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`Case 6:20-cv-00665-ADA Document 161 Filed 03/23/22 Page 2 of 5
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`Koss’ refusal to produce any additional minutes on burden and proportionality grounds is
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`unfounded. Mr. Koss testified that Koss generated only 4–5 Board minutes a year and maintained
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`them in both printed and electronic formats. (Koss Sr. Dep. 202:16–204:3.) Apple’s request thus
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`targets a discrete set of 30–40 readily-identifiable documents that discuss the inventors’ work (a
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`fact Koss does not dispute). Koss’s privilege claim is wrong. Mr. Koss testified that he prepared
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`all minutes between 2007 and 2013. (Koss Sr. Dep. 202:23-203:2.) Regardless, minutes for a
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`business meeting do not become privileged just because a lawyer wrote them. Koss does not even
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`assert privilege over pre-2010 minutes and can redact any privileged material. Nor is Koss’
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`speculation about third-party confidentiality a valid objection given the protective order in place.
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`This narrow set of documents is responsive to RFP 42, is relevant and proportional, and should be
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`produced.
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`Issue #2: Information Regarding Licensees to Patents-in-Suit
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`Apple’s Interrogatory 2 requested Koss to “[d]escribe, in detail, any attempts to license or
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`transfer any rights in or to any of the Patents-in-Suit, whether successful of not,” including the
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`terms of any licensing proposals. Koss did not dispute that this information is relevant to damages.
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`Rather than provide a narrative response, Koss committed to “produce documents regarding [its]
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`negotiations pursuant to Rule 33(d)” with respect to several entities, including Bose, JLab Audio,
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`Plantronics, and Skullcandy. Koss did not produce or identify any responsive documents in its
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`response.
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`Over four months later, Koss produced only two arguably responsive documents, i.e.,
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`Koss’ non-disclosure agreements with Bose and JLab. (KOSS_105135; KOSS_116631). These
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`documents do not “[d]escribe, in detail, any attempts to license or transfer any rights” in Koss’
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`patents, as Koss’ Rule 33(d) response promised.
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`Case 6:20-cv-00665-ADA Document 161 Filed 03/23/22 Page 3 of 5
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`Koss now admits that responsive documents exist but refuses to produce them on the
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`grounds that they are emails and Apple did not propound email requests per the OGP. This
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`objection is baseless. Koss, knowing both the OGP’s terms and the form of its licensing-related
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`documents, chose to invoke Rule 33(d) and to commit to producing documents instead of
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`providing a narrative. Having done so, Koss waived any objection to producing them. Nor can
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`Koss use “third-party confidentiality” to withhold discovery about communications Koss sent
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`about its own licensing offers or infringement claims. Similarly, Koss improperly cites FRE 408,
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`which governs admissibility, not discoverability. Koss should be compelled to produce all
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`documents describing its licensing efforts, or else provide a full narrative response to Interrogatory
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`2.
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`Relief Requested: Apple respectfully requests that the Court compel Koss to produce: (1)
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`Board of Director Meeting minutes during the timeframe of Koss’ “STRIVA” project as sought
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`by Apple’s RFP No. 42; and (2) documents sufficient to respond to Apple’s Interrogatory No. 2,
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`as Koss represented it would produce.
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`Issue #1: Board of Director Minutes
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`Koss’s Statement
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`The actual text of Request No. 42 shows that Apple seeks “[a]ll minutes from or notes of
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`every Board of Director meeting, including all regular and special meetings, between Your claimed
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`conception date of January 1, 2007, and the date You chose to discontinue the Striva project.”
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`Koss responded to Request No. 42 on November 4, 2021, at the close of fact discovery, by
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`objecting on several grounds, but stating Koss is willing to “meet and confer as to the appropriate
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`scope of this Request, if any.” Apple never requested a meet and confer or followed up on Koss’s
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`objections until January 21, 2022.
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`Apple asked Mr. Koss during his deposition who prepared the meeting minutes in the
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`exhibit before him in 2008. Apple did not ask whether that was true of all Board Meeting minutes
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`thereafter. In fact, while Mr. Koss drafted meeting minutes from 2007-2009, beginning in 2010
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`and into the present, counsel prepared drafts for review. These minutes are in large part, if not
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`entirely, privileged, and it is highly burdensome for Koss to be required to parse these documents
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`for privilege after the close of the limited discovery extension. Moreover, some of these minutes
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`likely contain third party confidential information subject to NDA, for which Koss would require
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`clearance to produce. To the extent Apple seeks all notes from these meetings, it is even more
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`unreasonable and burdensome to collect, review, redact, and product those notes.
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`Issue #2: Information Regarding Licensees to Patents-in-Suit
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`Koss objected to Interrogatory No. 2 on several grounds. Koss further objected to the
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`Interrogatory because it “seeks information containing the confidential and proprietary technical,
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`business, or trade secret information of a third party.” Subject to these objections, Koss responded
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`that it had licensing negotiations with other defendants against whom it has asserted its patents,
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`and listed those entities. Koss invoked Rule 33(d) to provide two Non-Disclosure Agreements
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`relevant to those licensing negotiations; it required the clearance from those third parties in order
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`to produce that information in the litigation.
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`Koss understands that pursuant to this Court’s OGP, it is not required to produce email
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`correspondence. Given that all interactions with third parties regarding licensing took place via
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`email, Koss satisfied its obligations. Apple is aware that any such correspondence was by email,
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`but made no email request under the OGP.
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`Koss should not be required, after the close of discovery was extended for limited purposes
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`solely because of Apple’s delay, to provide to Apple confidential third party information that Koss
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`Case 6:20-cv-00665-ADA Document 161 Filed 03/23/22 Page 5 of 5
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`received (via email) pursuant to an NDA and that it used in developing a settlement demand in the
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`context of litigation between third parties under F.R.E. 408. The information is irrelevant to any
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`issues involving Apple and contains precisely the confidential information Apple’s competitors
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`prevent from providing to Apple. Apple’s dilatory approach to discovery should not be rewarded.
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`Relief Requested: Koss respectfully requests that the Court deny Apple’s requested relief.
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`OPINION
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`Issue #1: The Court ORDERS Koss to produce the 35 most recent, final versions of the
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`contested meeting minutes from the 2007–2014 time frame. The Court is not persuaded that
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`production of 35 documents will unduly burden Koss. Koss need not produce attorney-generated
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`drafts. Koss has three weeks from the date of this order to make its production, which should give
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`any third parties sufficient time to make their objections.
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`Issue #2: The Court ORDERS Koss to fully respond to Interrogatory No. 2 by providing
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`a fully responsive, detailed narrative about each email that Koss is not producing. Koss may
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`alternatively produce the referenced emails in lieu of a detailed narrative response, but the Court
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`does not compel Koss to make an email production consistent with the OGP. Koss has three weeks
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`from the date of this order to make its production or give its full response, which should give any
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`third parties sufficient time to make their objections.
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`SIGNED this 23rd day of March, 2022.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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