Koss Corporation

Patent Trials and Appeals Board

Oct 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
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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.
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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.
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Patent 10,506,325 B1
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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
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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
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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.
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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
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Patent 10,506,325 B1
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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.
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Patent 10,506,325 B1
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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).
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Patent 10,506,325 B1
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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,
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Patent 10,506,325 B1
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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).
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Patent 10,506,325 B1
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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.
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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
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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
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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
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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
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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.

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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