Koss Corporation

Patent Trials and Appeals BoardOct 12, 2021

IPR2021-00679 (P.T.A.B. Oct. 12, 2021)

Trials@uspto.gov Paper 14 571-272-7822 Entered: October 12, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ APPLE INC., Petitioner, v. KOSS CORP., Patent Owner. ____________________ IPR2021-00679 Patent 10,506,325 B1 ____________________ Before DAVID C. MCKONE, GREGG I. ANDERSON, and NORMAN H. BEAMER, Administrative Patent Judges. MCKONE, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2021-00679 Patent 10,506,325 B1 2 I. INTRODUCTION A. Background and Summary Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “’679 Pet.”) requesting inter partes review of claims 5–8 and 11–13 of U.S. Patent No. 10,506,325 B1 (Ex. 1001, “the ’325 patent”). ’679 Pet. 1. Koss Corp. (“Patent Owner”) filed a Preliminary Response (Paper 11, “Prelim. Resp.”). We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we decline to institute an inter partes review of the ’325 patent. B. Related Matters 1. Lawsuits Petitioner advises us that it is a defendant in a case filed by Patent Owner asserting the ’325 patent in the United States District Court for the Western District of Texas captioned Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665 (W.D. Tex.) (“District Court case”). ’679 Pet. 81; see also Paper 6, 1. Patent Owner identifies another four lawsuits where Patent Owner is plaintiff and the ’325 patent is asserted against other parties. Paper 6, 1. Patent Owner identifies two other cases involving the ’325 patent, including one filed by Petitioner in the United States District Court for the Northern District of California captioned Apple Inc. v. Koss Corp., Case No. 4:20-cv-05504 (N.D. Cal.). Paper 6, 1. IPR2021-00679 Patent 10,506,325 B1 3 2. Inter Partes Review Proceedings Petitioner (’679 Pet. 81) states that the ’325 patent is also subject to Apple Inc. v. Koss Corp., IPR2021-00305 (“the ’305 IPR”), on which we instituted a trial and which we discuss in more detail below. Patent Owner (Paper 4, 2–3) lists the following inter partes review proceedings1 challenging patents related to the ’325 patent: Bose Corp. v. Koss Corp., IPR2021-00297, filed December 7, 2020, challenging U.S. Patent No. 10,368,155 B2; Apple Inc. v. Koss Corp., IPR2021-00381, filed January 4, 2021, challenging U.S. Patent No. 10,491,982 B1; Apple Inc. v. Koss Corp., IPR2021-00546, filed February 22, 2021, challenging U.S. Patent No. 10,206,025 B1; Apple Inc. v. Koss Corp., IPR2021-00592, filed March 2, 2021, challenging U.S. Patent No. 10,469,934 B1; Bose Corp. v. Koss Corp., IPR2021-00612, filed March 3, 2021, challenging U.S. Patent No. 10,206,025 B1; Apple Inc. v. Koss Corp., IPR2021-00626, filed March 17, 2021, challenging U.S. Patent No. 10,206,025 B1; Bose Corp. v. Koss Corp., IPR2021-00680, filed March 17, 2021, challenging U.S. Patent No. 10,469,934 B1; Apple Inc. v. Koss Corp., IPR2021-00686, 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 B1. 1 Apple Inc. v. Koss Corp., IPR2021-00255, filed November 25, 2020, and Apple Inc. v. Koss Corp., IPR2021-00600, filed March 7, 2021, both challenging US Patent 10,298,451 B1, are also pending. IPR2021-00679 Patent 10,506,325 B1 4 C. The ’325 Patent The ’325 patent describes wireless earphones or headphones. Ex. 1001, 2:3–5. Figure 1D, reproduced below, illustrates an example: Figure 1D is a perspective drawing of a wireless earphone. Id. at 2:30–31, 4:7. In this embodiment, earphone 10 includes hanger bar 17 that allows earphone 10 to clip to, or hang on, a listener’s ear. Id. at 4:4–7. Speaker element 106-A is sized to fit into the cavum concha of the listener. Id. at 4:10–12. Hanger bar 17 includes a horizontal section that rests upon the IPR2021-00679 Patent 10,506,325 B1 5 upper external curvature of the listener’s ear behind the upper portion of the auricula (or pinna). Id. at 4:14–18. Certain features of an embodiment of a wireless earphone are depicted in Figure 3, reproduced below: Figure 3 is a block diagram of a wireless earphone. Id. at 2:35–36, 6:30–31. Earphone 10 includes transceiver circuit 100, power source 102, microphone 104, acoustic transducer 106 (e.g., a speaker), and antenna 108. Id. at 6:31–37. Transceiver circuit 100, power source 102, and acoustic transducer 106 may be housed within body 12 of earphone 10 (shown in IPR2021-00679 Patent 10,506,325 B1 6 Fig. 1D above). Id. at 6:37–40. Microphone 104 and antenna 108 are external to body 12. Id. at 6:40–42. Earphone 10 may interface with an external device, such as the docking station shown in Figure 4A, reproduced below: Figure 4A is a drawing showing earphone 10 interfacing with docking station 200, which is connected to computer device 202. Id. at 7:64–66. Earphone 10 may connect to docking station 102 to charge up power source 102 and to download data or firmware. Id. at 8:5–8. IPR2021-00679 Patent 10,506,325 B1 7 Claims 1 and 5, reproduced below, are illustrative of the claimed subject matter: 1. Headphones comprising: a pair of first and second wireless earphones to be worn simultaneously by a user, wherein the first and second earphones are separate such that when the headphones are worn by the user, the first and second earphones are not physically connected, wherein each of the first and second earphones comprises: a body portion; an earbud extending from the body portion that is inserted into an ear of the user when worn by the user; a curved hanger bar connected to the body portion, wherein the curved hanger bar comprises a portion that rests upon an upper external curvature of an ear of the user behind an upper portion of an auricula of the ear of the user; a wireless communication circuit for receiving and transmitting wireless signals; a processor circuit connected to the wireless communication circuit; at least one acoustic transducer for producing audible sound from the earbud; a microphone for picking up utterances of a user of the headphones; an antenna connected to the wireless communication circuit; and a rechargeable power source; and a docking station for holding at least the first wireless earphone, wherein the docking station comprises a power cable for connecting to an external device to IPR2021-00679 Patent 10,506,325 B1 8 power the docking station, and wherein the docking station is for charging at least the first wireless earphone when the first wireless earphone is placed in the docking station. 5. The headphones of claim 1, wherein the processor circuits are configured to transition from playing streaming audio content received wirelessly from a first digital audio source via a first communication link to playing streaming audio content received wirelessly from a second digital audio source via a second communication link based on, at least in part, a signal strength for the second wireless communication link. D. Evidence Petitioner relies on the references listed below. Reference Date Exhibit No. Rosener US 2008/0076489 A1 pub. Mar. 27, 2008 1004 Huddart US 7,627,289 B2 iss. Dec. 1, 2009 filed Dec. 23, 2005 1005 Haupt WO 2006/042749 A2 pub. Apr. 27, 2006 10062 Price US 2006/0026304 A1 pub. Feb. 2, 2006 1008 Vanderelli US 7,027,311 B2 iss. Apr. 11, 2006 1010 Seshadri US 2006/0166716 A1 pub. July 27, 2006 1022 Seshadri-818 US 2005/0037818 A1 pub. Feb. 17, 2005 1023 Petitioner also relies on the Declaration of Jeremy Cooperstock, Ph.D. (Ex. 1003, “Cooperstock Decl.”). 2 We refer to a certified translation of the German language publication of WO 2006/042749. IPR2021-00679 Patent 10,506,325 B1 9 E. The Asserted Grounds Petitioner asserts the following grounds of unpatentability (’679 Pet. 1–2): References Basis Claim(s) Challenged Rosener, Huddart, Haupt, Seshadri3 § 103(a) 5–8 Rosener, Huddart, Haupt, Vanderelli, Seshadri § 103(a) 8 Rosener, Huddart, Haupt, Seshadri, Price § 103(a) 11–13 II. DISCRETIONARY DENIAL Institution of inter partes review is discretionary. See 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.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C. § 314(a). Patent Owner argues that the ’679 Petition in this proceeding is a serial petition relative to the petition in the ’305 IPR (’305 IPR Paper 2, “the ’305 Pet.”) and should be denied because it “frustrate[s] the purpose of the [AIA] as providing quick and cost effective alternatives to litigation.” Prelim. Resp. 22–24 (quoting General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 19 (PTAB Sept. 6, 2017) (precedential)). 3 Petitioner contends that Seshadri-818 is incorporated by reference into Seshadri. ’679 Pet. 59 (citing Ex. 1002 ¶ 1). IPR2021-00679 Patent 10,506,325 B1 10 The Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), avail. at tpgnov.pdf (uspto.gov) (the “CTPG”), provides guidance as to when multiple petitions challenging the same patent might be appropriate. For example, the CTPG advises applying the non-exclusive General Plastic factors “especially as to ‘follow-on’ petitions challenging the same patent as challenged previously in an IPR.” CTPG 56. This appears to be what Patent Owner refers to as “serial petitions challenging the same patent.” Prelim. Resp. 22. The CTPG also provides guidance on “Parallel Petitions Challenging the Same Patent,” namely, “[t]wo or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner).” CTPG 59. Here, Petitioner contends that it filed the ’679 Petition before receiving the preliminary response in the ’305 IPR. ’679 Pet. 9. Patent Owner appears to agree. Prelim. Resp. 25. In fact, the ’679 Petition was filed the day before Patent Owner filed its preliminary response in the ’305 IPR. Thus, although the two petitions at issue here were filed four months apart, the CTPG’s guidance as to parallel petitions is pertinent here. To that end, the CTPG states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. Thus, “multiple petitions by a petitioner are not necessary in the vast majority of cases.” Id. “Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b)). “Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, IPR2021-00679 Patent 10,506,325 B1 11 including, for example, when the patent owner has asserted a large number of claims in litigation,” although even then, granting two petitions “should be rare.” See id. If Petitioner “files two or more petitions,” it is authorized to file a separate paper ranking the petitions and providing “a succinct explanation of the differences between the petitions, [and] why the issues addressed by the differences are material.” CTPG 59–60. Petitioner filed such a Notice. Paper 3 (Petitioner’s Notice Ranking Petitions and Explaining Material Differences Between Petitions Against U.S. Patent No. 10,506,325) (“Notice”). Petitioner includes similar arguments in the ’679 Petition. ’679 Pet. 8–9. The Notice ranks the ’305 Petition first as Petitioner’s preference for consideration by the Board. Notice 1–2. As the Notice states, Petitioner filed two petitions challenging claims in the ’325 patent. Notice 1–2. The first petition, the ’305 Petition, challenges the claims as follows (’305 Pet. 1): References Basis Claim(s) Challenged Rosener, Huddart § 103(a) 1, 2, 16–18 Rosener, Huddart, Haupt § 103(a) 3, 4 Rosener, Huddart, Price § 103(a) 9, 10, 14 Rosener, Huddart, Paulson § 103(a) 15 Rosener, Huddart, Vanderelli § 103(a) 16, 17 As the table above shows, the first ’305 Petition challenges claims 1– 4, 9, 10, and 14–18. Then, the ’679 Petition here challenges the remaining claims 5–8 and 11–13 based on the same prior art, with two additional prior art references in the ’679 Petition relative to the ’305 Petition. See ’679 Pet. 2–3, 30–34, 57–63 (employing Seshadri (Ex. 1022) and Seshadri-818 (Ex. 1023)); Notice 2–3 (explaining differences between the petitions). IPR2021-00679 Patent 10,506,325 B1 12 To justify filing two petitions challenging the ’325 patent, Petitioner argues that “[t]his case presents a prototypical case where ‘patent owner has asserted a large number of claims,’” and that Patent Owner “has taken no steps to narrow the dispute, and has instead asserted all 18 claims of the ’325 Patent against [Petitioner] in the co-pending litigation.” Notice 2 (quoting CTPG 59). Petitioner argues that Patent Owner’s “unwillingness to narrow the claims asserted within the contentions leaves a quantum of claims–18– that . . . could not reasonably be addressed in a single petition in any event.” Pet. 8 (citing Ex. 1014 (Preliminary Infringement Contentions in the District Court case)). Petitioner argues that it filed the ’305 Petition “as quickly as possible” and “worked to furnish this petition as shortly thereafter.” Id. On its face, Petitioner’s contention that 18 claims is a quantum of claims that could not be addressed in a single petition is suspect. The Board routinely receives petitions challenging more than 18 claims. Indeed, the basic filing fee for an inter partes review contemplates challenging up to 20 claims. See 37 C.F.R. § 42.15(a)(2)–(3). Petitioner provides no explanation, in either the Notice or the ’679 Petition, as to why, despite the small number of claims in the ’325 patent, this case is the rare case in which two petitions are necessary to challenge all of the patent’s claims. Rather, Petitioner simply states that 18 is too many and that it has taken steps to make sure that the ’679 Petition is not too burdensome. Notice 2–3; ’679 Pet. 8–9. We see nothing unusual in the complexity of the ’325 patent’s claims or the technology of the challenged patent and prior art that would distinguish this case from the “vast majority of cases” in which one petition is sufficient. CTPG 59. We agree with Patent Owner that “[t]he First Petition . . . could have easily challenged claims 5–8 and 11–13 in view of Seshadri[] and Seshadri-818.” Prelim. Resp. 23. IPR2021-00679 Patent 10,506,325 B1 13 Rather than distinguish this case from the typical case, Petitioner’s arguments actually reinforce that one petition should have been sufficient. Petitioner contends that the ’305 Petition addressed all claims except those dependent claims that recite that “the processor circuits are configured to transition from playing streaming audio content received wirelessly from a first digital audio source via a first communication link to playing streaming audio content received wirelessly from a second digital audio source via a second communication link based on, at least in part, a signal strength for the second wireless communication link” (i.e., the “signal strength claims”). Notice 2. In our examination of the record, the ’679 Petition only adds to the ’305 Petition the analysis of claim 5 (including the addition of the Seshadri and Seshadri-818 references). ’679 Pet. 36–40, 57–63. Claims 6, 7, and 8 depend from claim 5 and add the same limitations as claims 2, 18, and 17, respectively. Claims 2, 18, and 17 were addressed substantively in the ’305 IPR. ’305 Pet. 47–56. Claim 11 depends from claims 1, 9, and 10 (all addressed in the ’305 IPR, ’305 Pet. 30–47, 69–71) and adds the same limitation as claim 5. Claims 12 and 13 depend from claim 11 and add the same limitations as claims 18 and 2, respectively (both of which, as noted above, were addressed substantively in the ’305 IPR). Thus, Petitioner’s argument is, essentially, that the ’679 Petition was necessary to address a single claim limitation, albeit appearing in seven claims due to dependencies. As Petitioner states, “[g]iven the dependencies of the signal strength claims, . . . the primary difference between the first and second petitions is found in sections of the second petition that address the signal strength claims.” Notice 3. Petitioner characterizes this as “a concise addition to deal with the 7 signal strength claims.” Id. Petitioner has offered no persuasive reason why its concise treatment of one claim (and references IPR2021-00679 Patent 10,506,325 B1 14 to previous analysis for six others) could not have been presented alongside the 11 claims challenged in the ’305 Petition. The Board already instituted trial based on the ’305 Petition, which Petitioner ranked first in its Notice for consideration by the Board. See Notice 1; ’305 IPR Paper 9 (“’305 Inst. Dec”). As outlined above, the circumstances advanced by Petitioner here do not rise to a “rare” situation warranting two petitions. See CTPG 59. Conducting two trials under these circumstances instead of one trial will “place a substantial and unnecessary burden on the Board and . . . [P]atent [O]wner and . . . raise fairness, timing, and efficiency concerns.” See id. (citing 35 U.S.C. § 316(b)). Based on the foregoing discussion, we exercise our discretion to deny institution based on the CTPG’s guidance on parallel petitions. Additionally, both parties address the applicability of the General Plastic factors to this case. Pet. 8–9; Prelim. Resp. 22–29. The analysis of these factors does not provide a persuasive reason to institute the follow-on or serial ’679 Petition (assuming we characterize the ’679 Petition as a serial, rather than a parallel petition given the four-month gap between it and the ’305 Petition). As to “whether the same petitioner previously filed a petition directed to the same claims of the same patent” (General Plastic factor 1), Petitioner argues that “this petition challenges the signal strength claims that were not challenged in the IPR2021-00305 petition.” ’679 Pet. 9. Patent Owner concedes that this factor “cuts against Patent Owner.” Prelim. Resp. 24. However, claim 5 depends from claim 1, which was addressed in the ’305 Petition. Indeed, all aspects of the claims challenged in the ’679 Petition save the signal strength limitation of claims 5 and 11 were addressed fully in IPR2021-00679 Patent 10,506,325 B1 15 the ’305 IPR. Thus, this factor only marginally cuts against exercising our discretion to deny the ’679 Petition. As to “whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it” (General Plastic factor 2), Petitioner filed the ’305 Petition on December 23, 2020. Petitioner is silent on when it became aware of Seshadri and Seshadri-818, or whether it knew about those references before December 23. Nevertheless, Petitioner’s stated reason for filing two petitions is that it could not challenge the large volume of asserted claims in one petition, not that it became aware of the prior art after filing the ’305 Petition. The implication is that Petitioner was ready to challenge those claims (and aware of the basis to do so) but for limitations on briefing space. As further evidence of Petitioner’s early knowledge of the prior art, Patent Owner argues that Petitioner was aware of Seshadri-818 and other references by the same inventor at least as early as January 2021, when Petitioner served invalidity contentions with those references in the District Court case. Prelim. Resp. 25 (citing Ex. 2013). Patent Owner further argues that Petitioner was aware of Seshadri at least as early as February 22, 2021, when it filed IPR2021-00546 advancing Seshadri as a reference. Id. Logically, Petitioner would have been aware of those references even earlier, as it would have spent significant time preparing its invalidity contentions and an IPR petition. In light of the evidence that Petitioner likely was aware of Seshadri and Seshadri-818 before the filing of the ’305 Petition, along with Petitioner’s silence as to its knowledge, this factor weighs against institution. As to “whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review IPR2021-00679 Patent 10,506,325 B1 16 in the first petition” (General Plastic factor 3), Petitioner states that it “has received neither [Patent Owner’s] preliminary response, nor the Board’s decision to institute in IPR2021-00305.” ’679 Pet. 9. Patent Owner concedes that this factor weighs against exercising our discretion to deny the ’679 Petition. Prelim. Resp. 25. As to “the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition” (General Plastic factor 4) and “whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent” (General Plastic factor 5), Petitioner argues that it “filed its first petition within four months of receiving [Patent Owner’s] extensive contentions” and “worked to furnish this petition as shortly thereafter.” ’679 Pet. 8. Petitioner contends that it “has judiciously worked to identify and frame for consideration the prior art offered to demonstrate unpatentability” and complains of Patent Owner’s “unbounded infringement allegations.” Id. (citing Ex. 1014). However, as noted above, the ’679 Petition merely added a “concise” analysis of the additional limitation of one claim and otherwise repeats analysis presented in the ’305 Petition. Petitioner provides no persuasive reason why it waited an additional four months to file its second petition. These factors weigh in favor of exercising our discretion to deny the ’679 Petition. As to “the finite resources of the Board” (General Plastic factor 6) and “the requirement under 35 U.S.C. § 316(a) (11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review” (General Plastic factor 7), the Board has stated that “the Board’s resources would be more fairly expended on initial IPR2021-00679 Patent 10,506,325 B1 17 petitions, rather than follow-on petitions.” General Plastic, Paper 19 at 10. Petitioner offers to modify the schedules of the ’305 IPR and this proceeding such that this proceeding is on essentially the same track as the ’305 IPR. Pet. 1–2; Notice 3. Patent Owner responds that these proceedings could be consolidated, but that might jeopardize the Board meeting its one-year deadline for final written decisions. Prelim. Resp. 28. Although we might be able to adjust schedules to minimize the waste of resources and added burden to the Board and Patent Owner, and to finish on time, Petitioner has not offered any credible justification for filing two petitions challenging the same patent or for its four month delay between those filings. These factors are, at best for Petitioner, neutral. Upon weighing the General Plastics factors, we see no persuasive reason to allow Petitioner to proceed on two petitions challenging the same patent. Petitioner provides no credible explanation for why it was necessary to file two petitions challenging the ’325 patent, given that the ’325 patent only includes 18 claims. Nor did Petitioner explain persuasively why it was appropriate to wait four months between petitions to concisely address a single claim limitation, especially when it was aware of the Seshadri and Seshadri-818 references long before the ’679 Petition was filed (and likely before the ’305 Petition was filed). The Board’s resources are better spent addressing the ’305 Petition. On this additional basis, we exercise our discretion to deny the ’679 Petition. III. CONCLUSION We exercise our discretion to deny the ’679 Petition. IPR2021-00679 Patent 10,506,325 B1 18 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is denied as to claims 5–8 and 11–13 of the ’325 patent. PETITIONER: W. Karl Renner Roberto Devoto Ryan Chowdhury FISH & RICHARDSON P.C. axf-ptab@fr.com devoto@fr.com rchowdhury@fr.com PATENT OWNER: Mark G. Knedeisen Ragae M. Ghabrial Michelle Weaver K&L GATES LLP mark.knedeisen@klgates.com ragae.ghabrial@klgates.com michelle.weaver@klgates.com