Koss Corporation

Patent Trials and Appeals Board

Oct 13, 2021

IPR2021-00693 (P.T.A.B. Oct. 13, 2021)

Trials@uspto.gov Paper 11
571-272-7822 Entered: Oct. 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE, INC.,
Petitioner,
v.
KOSS CORP.,
Patent Owner.

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Before KARL D. EASTHOM, PATRICK R. SCANLON, and
DAVID C. McKONE, Administrative Patent Judges.

Opinion for the Board by Administrative Patent Judges SCANLON and
McKONE, per curiam.

Opinion dissenting filed by Administrative Patent Judge EASTHOM.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Apple, Inc. (“Petitioner”) filed a Petition requesting inter partes
review of claims 1–6, 8, 10–20, 22–29, 31–36, 38–42, 44, and 58–62 ( of
U.S. Patent No. 10,469,934 B2 (Ex. 1001, “the ’934 patent”). Paper 2
(“Pet.”). Koss Corp. (“Patent Owner”) filed a Preliminary Response.
Paper 8 (“Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 6. Upon considering the
preliminary record, for reasons discussed below, we decline to institute
inter partes review.
II. BACKGROUND
A. Real Parties in Interest
Petitioner states that it is the real party-in-interest. Pet. 76. Patent
Owner states that it is the real party in interest. Paper 4 (“Mandatory Notice
by Patent Owner”), 1; see also Paper 6 (update).
B. Related Matters
Both parties list the related lawsuit alleging infringement of the ’934
patent, Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665 (W.D. Tex.)
(“District Court” or “District Court Lawsuit”). Pet. 76; Paper 4, 1. Patent
Owner lists other lawsuits involving the ’934 patent, United States
applications to which the ’934 patent claims priority, and pending inter
partes reviews as related matters. Paper 4 (updated in Papers 6 and 7), 1–2.
1. Other Lawsuits
Patent Owner identifies several other lawsuits involving the ’934
patent: Koss Corp. v. Skullcandy, Inc., No. 6:20-cv-00664 (W.D. Tex);
Koss Corp. v Plantronics, Inc., No. 6-20-cv-00663 (W.D. Tex.); Koss Corp.
v. Bose Corp., No. 6-20-cv-00661 (W.D. Tex); Bose Corp. v. Koss Corp.,
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No. 1-20-cv-12193 (D. Mass.); and Apple Inc. v. Koss Corp., No. 4:20-cv-
05504 (N.D. Cal.). Paper 4, 1.
2. United States Applications
Patent Owner lists the following applications as related applications
to which the ’934 patent claims priority: PCT application No.
PCT/US2009/039754, filed April 7, 2009 (the “PCT Application”), and
provisional application Serial No. 61/123,265, filed April 8, 2008 (the
“Provisional Application”). Paper 4, 2.
3. Inter Partes Review Proceedings
Patent Owner lists the following inter partes review proceedings
challenging patents that claim priority to the PCT Application and the
Provisional Application:1
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.,
IPR2021-00305, filed December 15, 2020, challenging U.S. Patent No.
10,506,325 B1; 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., IPR2021-00612, filed March 3,
2021, challenging U.S. Patent No. 10,206,025; Apple Inc. v. Koss Corp.,
IPR2021-00626, filed March 17, 2021, challenging U.S. Patent No.
10,206,025 B1; Apple Inc. v. Koss Corp., IPR2021-00679, filed March 22,
2021, challenging U.S. Patent No. 10,506,325 B1; and Apple Inc. v. Koss

1 Additional inter partes review proceedings involving these same parties
include 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 U.S. Patent No. 10,298,451 B1.
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Corp., IPR2021-00686, filed March 22, 2021, challenging U.S. Patent No.
10,491,982 B1. Paper 4, 2.
Two inter partes review proceedings involve claims of the ’934
patent, including claims challenged and not challenged here: Bose Corp. v.
Koss Corp., IPR2021-00680, filed March 17, 2021; and Apple Inc. v. Koss
Corp., IPR2021-00592, Paper 2 (March 2, 2021) (the “’592 petition”),
Paper 9 (Aug. 23, 2021) (Institution Decision) (the “’592 Inst. Dec.”)
(generally, the “’592 IPR”).
C. The ’934 Patent
The ’934 patent’s priority dates are April 7, 2009, based on the PCT
Application, and April 7, 2008, based on the Provisional Application.
Ex. 1001, codes (60), (63).
1. Background Technology
The ’934 patent characterizes prior art wired headphones that
interconnect a headphone with a data storage unit as “cumbersome.”
Ex. 1001, 1:42–51. The ’934 patent also characterizes prior art wireless
headphones connected via IEEE 802.11 (e.g., a Wi-Fi connection) to a
WLAN-ready laptop or personal computer as “quite large and not in-ear
type phones.” Id. at 1:58–62.
2. The ’934 Patent’s Wireless Earphones
The ’934 patent describes a wireless earphone that receives streaming
audio data from a data source such as an audio player or computer via an ad
hoc wireless network and infrastructure wireless networks, and that
transitions seamlessly between wireless networks. Ex. 1001, 1:66–2:3. The
’934 patent describes an “ad hoc wireless network” as “a network where
two . . . wireless-capable devices, such as the earphone and a data source,
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communicate directly and wirelessly, without using an access point.” Id. at
3:3–6.2 An ad hoc network is in contrast to an “infrastructure wireless
network,” which is “a wireless network that uses one or more access points
to allow a wireless capable device, such as the wireless earphone, to
connect to a computer network, such as a LAN [local area network] or
WAN [wide area network] (including the Internet).” Id. at 3:6–11.
The earphone has a body and an ear canal portion for insertion into
the ear canal of the user of the earphone. Ex. 1001, 3:17–20, 3:54–56.
Some embodiments employ “two discrete wireless earphones,” one in each
ear. Id. at 3:47–49. Figure 2A of the ’934 patent follows:

Figure 2A illustrates earphone 10 communicating over ad hoc wireless
network 24 with data source 20. Id. at 4:26–32. The earphone’s transceiver

2 The art sometimes refers to ad hoc networks as piconets, of which a
Bluetooth network is an example. See, e.g., Ex. 1003 ¶¶ 27, 29, 41;
Ex. 1007 ¶ 6; Pet. 24 (“piconet connection (i.e., an ad hoc network, such as
Bluetooth)”). For purposes of this Decision, we use “ad hoc network,”
“Bluetooth,” and “piconet” interchangeably, as any differences in these
terms do not affect the outcome of this proceeding.
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circuit communicates wirelessly with the data source. Id. at 4:28–32. One
example of a data source is a digital audio player (DAP). Id. at 4:32–33.
The DAP transmits audio wirelessly to earphone(s) via the ad hoc network
if the DAP and earphone(s) are “in range” of that network. Id. at 4:56–57.
“When in range, the data source 20 may communicate with the earphone 10
via the ad hoc wireless network 24 using any suitable wireless
communication protocol,” including Bluetooth and other communication
protocols. Id. at 4:56–61.
The earphone’s user may access an associated web page through a
server. Ex. 1001, 8:7–9, Fig. 2D. “[A]t the web site, the user could set
various content features and filters, as well as adjust various sound control
features, such as treble, bass, frequency settings, noise cancellation settings,
etc.,” all of which are set by the user. Id. at 8:15–21. “In addition, the user
could set preferred streaming audio stations, such as preferred Internet radio
stations or other streaming audio broadcasts.” Id. at 8:18–21. Thus,
“instead of listening to streaming audio from the data source 20, the user
could listen to Internet radio stations or other streaming audio broadcasts
received by the earphone 10.” Id. at 8:21–24.
D. Illustrative Claim
Independent claim 58 illustrates the claimed subject matter:
58. A headphone assembly comprising:
first and second earphones, wherein each of the first and
second earphones comprises an acoustic transducer; and
an antenna for receiving wireless signals from a mobile,
digital audio player via one or more ad hoc wireless
communication link, wherein the mobile, digital audio player is
a first digital audio source;
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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;
a processor;
a rechargeable battery for powering the headphone
assembly; and
a microphone for picking up utterances by a user of the
headphone assembly; and
wherein the headphone assembly is configured to 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;
wherein the processor is 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;
and
wherein the headphone assembly transitions to play
digital audio content received wirelessly from a second digital
audio source via a second wireless communication link based
on, at least, a signal strength level for the second wireless
communication link, wherein the second digital audio source is
different from the first digital audio source.

E. Evidence of Record
Petitioner relies on the following prior art references and expert
testimony:
Haupt, PCT/EP 2005/011228, issued Apr. 27, 2006 (Ex. 1004)
Seshadri, US 2006/0166716 A1, published July 27, 2006 (Ex. 1007)
Rosener, US 2008/0076489 A1, published Mar. 27, 2008 (Ex. 1008)
Rao, US 7,881,745 B1, issued Feb. 1, 2011 (Ex. 1009)
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Paulson, US 7,551,940 B2, issued June 23, 2009 (Ex. 1011)
Seshadri-818, US 2005/0037818 A1, published Feb. 17, 2005 (Ex. 1013)
Declaration of Dr. Jeremy Cooperstock (Ex. 1003)

F. Prior Art and Asserted Grounds
Petitioner asserts that claims 1–6, 8, 10–20, 22–29, 31–36, 38–42, 44,
and 58–62 would have been unpatentable on the following grounds (Pet. 1–
2):
Claim(s)
Challenged 35 U.S.C.
3 § Reference(s)/Basis
58, 59 103 Haupt, Seshadri4
60, 61 103 Haupt, Seshadri, Paulson
1, 2, 8, 32, 62 103 Haupt, Seshadri, Rao
3–6 103 Haupt, Seshadri, Rao, Paulson
10, 13–15, 18,
22–24, 27, 31,
33–36, 38, 41, 42,
44
103 Haupt, Seshadri, Rao, Rosener
11, 12, 16, 17, 19,
20, 25, 26, 28, 29,
39, 40
103 Haupt, Seshadri, Rao, Rosener, Paulson

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
March 16, 2013. Because the application that resulted in the ’934 patent
has an effective filing date before this date, the pre-AIA version of § 103
applies.
4 The Petition also relies on Seshadri-818 (Ex. 1013), which Seshadri
incorporates by reference. See Pet. 28–29 (citing Ex. 1007 ¶ 1
(incorporating by reference App. No. 10/856,430––i.e., Seshadri-818);
Ex. 1013).
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G. Serial Petitions
Petitioner filed two petitions challenging claims in the ’934 patent.
The first petition, the ’592 petition, challenges the claims as follows (’592
Inst. Dec. 9):
Claim(s)
Challenged 35 U.S.C. § Reference(s)/Basis
1, 2, 9, 32, 47, 52,
53, 54, 56, 57 103 Haupt, Seshadri, Rao
3, 5, 7 103 Haupt, Seshadri, Rao, Paulson
10, 14, 15, 23, 24,
33–36, 42, 43, 46,
48–51, 55
103 Haupt, Seshadri, Rao, Rosener
11, 16, 19, 21, 25,
28, 30, 37, 39, 45 103
Haupt, Seshadri, Rao, Rosener,
Paulson

As the chart above shows, the ’592 petition challenges claims 1–3, 5,
7, 9–11, 14–16, 19, 21, 23–25, 28, 30, 32–37, 39, 42–43, 45–48, and 51–57.
The Petition here challenges claims 1–6, 8, 10–20, 22–29, 31–36, 38–42,
44, and 58–62 based on the same prior art, with one added prior art
reference in the Petition. See Pet. 28–33 (employing Seshadri-818
(Ex. 1013)).
Petitioner explains that the additional claims challenged here relative
to the ’592 petition “recite that ‘the headphone assembly transitions to play
digital audio content received wirelessly from a second digital audio source
. . . based on, at least, a signal strength level . . . ’ (i.e., the ‘signal strength
claims’).” Paper 3 (“Notice”), 2. Petitioner explains that the instant
Petition “relies upon the disclosure of Seshadri-818, in addition to the prior
art relied upon in IPR2021-00592, with the intent of demonstrating the
unpatentability of the signal strength claims (i.e., claims 4, 6, 8, 12, 13, 17,
18, 20, 22, 26, 27, 29, 31, 38, 40, 41, 44, and 58–62).” Id. at 2–3.
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Claim 58, reproduced above and addressed below, is representative
of the “signal strength” claims. As explained below, Petitioner fails to
demonstrate a likelihood of prevailing on the “signal strength” claims at the
heart of this Petition. See infra § III.D.4. Accordingly, we exercise our
discretion and decline to institute on the remaining claims for efficiency
reasons, because the Board instituted on the ’592 petition, and the ’592
petition challenges the same non-signal strength claims based on materially
the same rationale and prior art as here. Instituting another trial of the same
claims on nearly identical grounds will “place a substantial and unnecessary
burden on the Board and . . . [P]atent [O]wner and . . . raise fairness, timing,
and efficiency concerns.” See The Patent Trial and Appeal Board
Consolidated Trial Practice Guide (Nov. 2019), available at tpgnov.pdf
(uspto.gov) (the “TPG”), 59 (citing 35 U.S.C. § 316(b)).
III. OBVIOUSNESS ANALYSIS
A. Legal Standard for Obviousness
A patent claim is invalid as obvious if the differences between the
claimed subject matter and the prior art are “such that the subject matter as
a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter
pertains.” 35 U.S.C. § 103(a) (2018).
The ultimate determination of obviousness is a question of law,
but that determination is based on underlying factual
findings. . . . The underlying factual findings include (1) “the
scope and content of the prior art,” (2) “differences between the
prior art and the claims at issue,” (3) “the level of ordinary skill
in the pertinent art,” and (4) the presence of secondary
considerations of nonobviousness such “as commercial success,
long felt but unsolved needs, failure of others,” and unexpected
results.
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In re NuVasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (citing inter alia
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
“To satisfy its burden of proving obviousness, a petitioner cannot
employ mere conclusory statements. The petitioner must instead articulate
specific reasoning, based on evidence of record, to support the legal
conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
Board must consider whether a person of ordinary skill would have been
motivated to combine the prior art to achieve the claimed invention.
NuVasive, 842 F.3d at 1381.
As the Federal Circuit reasons,
“because inventions in most, if not all, instances rely upon
building blocks long since uncovered, and claimed discoveries
almost of necessity will be combinations of what, in some sense,
is already known,” “it can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new
invention does.”

Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed. Cir.
2017) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19
(2007)).
B. Level of Ordinary Skill in the Art
Petitioner cites to Dr. Cooperstock’s testimony, which follows:
Based upon my experience in this area and taking into
account the above references, a person of ordinary skill in the art
at the time of the ’934 patent’s Critical Date . . . would have had
at least a Bachelor’s Degree in an academic area emphasizing
electrical engineering, computer science, or a similar discipline,
and at least two years of experience in wireless communications
across short distance or local area networks. Superior education
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could compensate for a deficiency in work experience, and vice-
versa.

Ex. 1003 ¶ 33; see also Pet. 4 n.1 (citing Ex. 1003 ¶¶ 33–34 (defining a
person of ordinary skill in the art)). Patent Owner does not comment on
this statement nor does it propose a different level of skill. For purposes of
this Institution Decision, we adopt the level of skill set forth above as
supported by the prior art references of record and the ’934 patent
Specification.
C. Claim Construction
In inter partes reviews, the Board interprets claim language using the
district court 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 have their 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.
Neither party construes a claim term. See Pet. 4; see generally,
Prelim. Resp. No need exists to construe any claim term to resolve a
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controversy here.5 See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we
need only construe terms ‘that are in controversy, and only to the extent
necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
D. Obviousness of Signal Strength Claim 58,
over Haupt, Seshadri, and Seshardi-818
Petitioner alleges that claim 58, which represents the “signal
strength” subject matter included in claims 4, 6, 8, 12, 13, 17, 18, 20, 22,
26, 27, 29, 31, 38, 40, 41, 44, and 58–62, would have been obvious over
Haupt, Seshadri, and Seshardi-818. Pet. 1, 4–42. Petitioner also relies on
the Cooperstock Declaration. See Ex. 1003.
1. Haupt (Ex. 1004)
Haupt describes “WLAN headphones” that receive audio data
wirelessly transmitted from a server through an access point. Ex. 1004,
2:22–3:7. When the headphone is within transmission range of a WLAN

5 The Dissent argues that the signal strength limitations might not be
limitations at all, and, instead are statements of intended use. Neither party
proposes or argues such a position. Nor does either party appear to have
raised this issue before the District Court. See Ex. 2002 (joint claim
construction statement); Ex. 2003 (claim construction order). If Petitioner
wanted to construe the signal strength limitations in this manner, Petitioner
should have proposed and supported such a construction in the Petition.
See 37 C.F.R. § 42.104(b)(3). Below, we evaluate the arguments and
evidence Petitioner does present and decline the Dissent’s invitation to
reformulate the Petition (which would result in a lower required showing
for Petitioner). Cf. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018)
(“Much as in the civil litigation system it mimics, in an inter partes review
the petitioner is master of its complaint and normally entitled to judgment
on all of the claims it raises, not just those the decision maker might wish to
address.”).
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access point, the access point connects to the headphone, which permits the
headphone to wirelessly receive data from the server. Id. at 2:22–24.
Haupt also discloses an audio forwarding mode in which a
headphone “perform[s] as a local server, providing [] stored audio files to
other playback devices.” Id. at 10:7–24. The headphone “can therefore
receive data wirelessly from an access point, and then send this data to
another playback device.” Id.
Figure 1 of Haupt follows:

Figure 1 illustrates a data transfer system.
Ex. 1004, 5:23–24, 6:16–17. As shown in Figure 1, private sector server PS
is connected to public sector server OS over the Internet. Id. at 6:17–18.
Access point APP is hardwired to the private server PS. Id. at 6:18–19.
APP has a WLAN interface and, so long as playback device WG is within
transmission range of the private access point APP, the two wirelessly
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communicate with each other. Id. at 6:18–23. Playback device WG
includes headphones with a WLAN interface. Id. at 7:31–8:1.
Control buttons on the headphones provide navigation of the audio
files. Ex. 1004, 14:16–18. “The control buttons can likewise have
numerous functions, such that it is possible to navigate both within a music
piece and within the files or databases on the server.” Id. at 14:22–23.
2. Seshadri (Ex. 1007)
Seshadri describes a modular wireless headset, including a wireless
earpiece, wirelessly coupled to a base unit. Ex. 1007 ¶ 24. The base unit
“may be a cellular telephone, wire line telephone, laptop computer, personal
computer, personal digital assistant, etc., using antennas 7 and transceiver
(transmitter and/or receiver) 13 of FIG. 2 via a first communication
pathway 18.” Id. The base unit may couple the headset to multiple
playback devices, audio streams or voice communication networks such as
radio, cellular, wireless voice. Id. “[A]fter exchanging and completing
registration information,” using, for example, the Bluetooth specification,
wireless communication may be established between the headset and base
unit. Id. ¶¶ 26, 36, 40.
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Figure 3 of Seshadri follows:

Figure 3 depicts the earpiece of the modular headset paired with the
base unit to automatically connect to resources over a transceiver.

Ex. 1007 ¶ 35. The resources may be a cellular telephone network, wire
line telephone, Ethernet telephone, laptop computer, personal computer, or
personal digital assistant. Id. Still referring to Figure 3, “wireless headset
10 may be wirelessly coupled with any one of the devices 30–37 and act as
the headset communicatively coupled and registered to the devices 30–37.”
Id. ¶ 40.
Seshadri’s devices 30–37 each have piconet RF interface 38 and
WLAN RF interface 39. Id. ¶¶ 40–41. Wireless headset 10 may establish a
piconet with any one of devices 30–37 or access point 21 (which includes
both piconet RF interface 38 and WLAN RF interface 39). Id. ¶ 43. In one
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example, if headset 10 is unable to establish a piconet connection with
cellular telephone 36 via piconet RF interface 38, headset 10 establishes a
wireless communication link with cellular telephone 36 via WLAN RF
interfaces 39 and access point 21. Id. ¶ 42, Fig. 3. In another example,
wireless headset 10 can function as the headset for wire line telephone 37,
and can be connected via a piconet. Id. ¶ 43. If headset 10 strays too far
from wire line telephone 37, but is close enough to cellular telephone 36,
then headset 10 may connect to cellular telephone 36 (via a piconet) and
cellular telephone 36 can connect to wire line telephone 37 via the WLAN
and access point 21. Id. ¶ 44. “Thus, a logical connection is established
between headset 10 and wire line telephone 37 via cellular telephone 36 and
access point 21.” Id. “Accordingly, within a wireless geographic area, the
range of headset 10 may be extended utilizing the WLAN within the
geographic area. As such, headset 10 extends the mobility of its user,
extends the range of headset use and expands on headset functionality while
preserving privacy and security by seeking service from base units to which
it may be registered.” Id.
3. Seshardi-818 (Ex. 1013)
Seshadri-818 describes “a method for supporting a universal wireless
headset for ongoing communications [] by monitoring signal strength of
communications within a piconet that includes the headset and a device
coupled to the network.” Ex. 1013 ¶ 11. In Seshadri-818, a universal
headset establishes a piconet with a host device, which can be a cellular
telephone, wire line telephone, personal or laptop computer, PDA, or access
point to a WLAN. Id. ¶ 10. If the signal strength of the piconet connection
drops below a threshold, another device is identified to which the headset
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can connect. Id. ¶ 11. “In addition, a logical connection may be established
between the new device and a host device supporting the communication.
Accordingly, a universal wireless headset is provided that extends the
mobility of the user, extends the range of the headset and expands on its
functionality.” Id.
Figure 1 is reproduced below:

Figure 1 is a schematic block diagram of a wireless geographic area
coupled to a WLAN.

Id. ¶ 12. In this example, a communication is to be processed via wire line
telephone 14, which is the host device; however, headset 12 is too far away
for a piconet to be established with telephone 14. Id. ¶ 26. Instead, headset
12 establishes a piconet with cellular telephone 22, which, in turn,
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establishes a connection with access point 24. Id. Access point 24
establishes a communication link with telephone 14. Id. “Thus, a logical
connection is established between the universal wireless headset 12 and the
wire line telephone 14 via cellular telephone 22 and access point 24.” Id.
Figure 8 is reproduced below:

Figure 8 is a logic diagram of a method for supporting a universal
wireless headset.
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Id. ¶ 19. At step 180,6 signal strength of the communications over the
piconet (including the headset and device) is monitored. Id. ¶ 49. At step
182, it is determined whether the signal strength “compares unfavorably to
a signal strength threshold (e.g., is below a threshold of –80 to –85 dB).”
Id. At step 184, another device coupled to the network is identified.
Id. ¶ 50. At step 186, a new piconet is established between the universal
wireless headset and the new device. Id. “This enables the universal
wireless headset to roam within the local area network and maintain its
wireless headset functionality with one of its host devices as it roams.” Id.
4. Claim 58
Regarding claim 58, Petitioner cites Haupt for aspects relating to
wireless headphones and Seshadri for aspects relating to digital audio
sources, as well as for headphones with a rechargeable battery. Pet. 11–33.
According to Petitioner, a skilled artisan “would have found it obvious to
modify Haupt based on Seshadri such that Haupt’s WLAN headphones
include the capability to not only communicate with servers via WLAN (as
taught by Haupt), but to also communicate with local audio sources via both
WLAN and ad hoc networks (as taught be Seshadri).” Id. at 8–9.
In particular, Petitioner cites to Haupt’s wireless headphone unit as
showing “[a] headphone assembly” and “first and second earphones,
wherein each of the first and second earphones comprises an acoustic
transducer,” as recited in claim 58. Id. at 11–14 (limitations 58[pre] and

6 Figure 8 depicts steps 180, 182, 184, and 186. The specification of
Seshadri-818 describes steps 120, 122, 124, and 126. Ex. 1013 ¶¶ 49–50.
We interpret the discrepancy as a typographical error. For purposes of this
Decision, we use the numbering depicted in Figure 8.
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58[a]7). Petitioner further cites Haupt for “an antenna for receiving wireless
signals.” Id. at 14–15 (limitation 58[b]). Petitioner also cites Haupt for “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” and “a processor.” Id. at 18–
21 (limitations 58[c] and 58[d]). Petitioner further cites Haupt for “a
microphone for picking up utterances by a user of the headphone
assembly.” Id. at 22–23 (limitation 58[f]).
Petitioner cites, inter alia, Seshadri for “a rechargeable battery for
powering the headphone assembly,” as recited in claim 58. Id. at 21–22
(limitation 58[e]).
Petitioner cites Seshadri for receiving signals from “a mobile digital
audio player via one or more ad hoc wireless communication links, wherein
the mobile, digital audio player is a first digital audio source,” as recited in
claim 58. Id. at 15–16 (limitation 58[b]). In particular, Petitioner contends
that Seshadri’s cellphone 36 is a first digital audio source and that
Seshadri’s PDA 30 is “a second digital audio source that is different from
the first digital audio source,” as recited in claim 58. Id. (citing Ex. 1007,
Fig. 3; Ex. 1003 ¶¶ 75–76).
As to “wherein the headphone assembly is configured to 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,” as recited in claim 58, Petitioner argues that “in the combination of
Haupt and Seshadri, Haupt’s WLAN headphones would be configured to

7 The Petition enumerates claim 58’s limitations as 58[pre] and 58[a]–58[i].
Pet. 11–33.
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couple with the mobile, digital audio players taught by Seshadri (e.g., PDA
30 or cellphone 36) via a piconet connection (i.e., an ad hoc network, such
as Bluetooth).” Id. at 23–24 (limitation 58[g]) (citing Ex. 1007 ¶¶ 40–42;
Ex. 1003 ¶ 90). According to Petitioner, “the mobile, digital audio player
(e.g., PDA 30 or cellphone 36) is for transmitting digital audio content to
the headphone assembly (i.e., the modified WLAN headphones of Haupt)
via one or more ad hoc wireless communication links (i.e., the piconet
connection), such that the content is playable by the first and second
earphones.” Id. at 24.
As to “wherein the processor is 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,” as recited in claim 58, Petitioner argues
that Haupt’s data transfer system, including private server PS and public
server OS, is a “remote, network connected server that is in wireless
communication with the mobile, digital audio player.” Id. at 24–26
(limitation 58[h]) (citing Ex. 1004, 6:16–7:5, 7:30–31, 15:28–31, 19:10–21,
Fig. 1). Petitioner argues that each of Seshadri’s devices (e.g., PDA 30 and
cellphone 36) “would be able to communicate with and receive audio files
from a server (e.g., public server OS) in the same manner as the operating
element BE taught by Haupt with respect to FIG. 3.” Id. at 26 (citing
Ex. 1004, 9:2–8, 10:7–24; Ex. 1003 ¶ 94). In Petitioner’s combination, this
server (e.g., public server OS) “would have provided a source for the audio
streams to which Seshadri teaches the base units 16 have access.” Id. at
26–27 (citing Ex. 1007 ¶ 24; Ex. 1003 ¶ 94).
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Petitioner contends that Seshadri teaches the signal strength
limitation of claim 58, i.e.,
wherein the headphone assembly transitions to play digital
audio content received wirelessly from a second digital audio
source via a second wireless communication link based on, at
least, a signal strength level for the second wireless
communication link, wherein the second digital audio source is
different from the first digital audio source.
Pet. 28–33 (claim limitation 58[i]). Petitioner’s contention, however, is
based on a mischaracterization of Seshadri.
In particular, Petitioner argues that “Seshadri focuses on providing
access to multiple audio sources and transitioning between them.” Id. at 7
(citing Ex. 1007 ¶¶ 9, 24, 67). According to Petitioner, “Seshadri’s
headphones allow a user to receive audio from any of his/her portable
devices and are configured to allow the user to easily transition between
these audio sources.” Id. at 8 (citing Ex. 1007 ¶¶ 5–7, 43, 67–68; Ex. 1003
¶ 42). Petitioner states that “Seshadri does not explicitly describe a
transition to a second audio source on the basis of signal strength,” and cites
to Seshadri-818 as teaching transitioning between devices based on signal
strength. Id. at 28–31. Petitioner argues that a skilled artisan “would have
been motivated to [combine these teachings] in order to enable the WLAN
headphones/headset ‘to roam within the local area network and maintain its
wireless headset functionality with one of its host devices as it roams,’ as
taught by Seshadri-818.” Id. at 31 (quoting Ex. 1013 ¶ 50; citing Ex. 1003
¶ 103).
Neither Seshadri nor Seshadri-818 teaches transitioning between
sources of digital audio. Seshadri teaches transitioning between two types
of wireless communication (e.g., from piconet to WLAN) in order for
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headphones (wireless headset 10) to continue communicating with the same
source (e.g., cellular telephone 36) when the signal strength of the first
communication type (e.g., piconet) becomes too low. Ex. 1007 ¶ 42. In
another example, Seshadri teaches headset 10 transitioning between one
device, wire line telephone 37, and another device, cellular telephone 36.
Id. ¶ 44. However, cellular telephone 36 is connected via another path (e.g.,
the WLAN) to wire line telephone 37 and essentially is acting as a repeater
to communicate the telephone information from its source, wire line
telephone 37, to headset 10. Id. It is in this context that Seshadri teaches
that “headset 10 extends the mobility of its user, extends the range of
headset use and expands on headset functionality while preserving privacy
and security by seeking service from base units to which it may be
registered.” Id. In other words, by using cellular telephone 36 as an
intermediary, headset 10 can travel farther away from wire line telephone
37, the source of the phone call, and still communicate with it. This is not,
however, an example of transitioning between two sources, as required by
claim 58. Wire line telephone 37 still is the only source with which
headset 10 communicates in this example.
Seshadri-818’s teaching is similar to this second example in Seshadri.
Although Seshadri-818 describes transitioning headset 12 from one device
to another (e.g., from wire line telephone 14 to cellular telephone 22) based
on signal strength, the second device (cellular telephone 22) is used merely
as an intermediary between headset 12 and wire line telephone 14 so that
the headset can continue to communicate with the wire line telephone, the
source of the data. Ex. 1013 ¶¶ 11, 26, 49–50. Again, it is in the context of
the second device acting as an intermediary between a headset and a single
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source that Seshadri-818’s invention “extends the mobility of its user,
extends the range of headset use and expands on headset functionality.”
Id. ¶ 26 (“Thus, a logical connection is established between the universal
wireless headset 12 and the wire line telephone 14 via the cellular telephone
22 and access point 24.”). See also id. ¶¶ 11 (“[A] logical connection may
be established between the new device and a host device supporting the
communication,” with the benefit that “a universal wireless headset is
provided that extends the mobility of the user, extends the range of the
headset and expands on its functionality.”), 50 (“This enables the universal
wireless headset to roam within the local area network and maintain its
wireless headset functionally with one of its host devices as it roams.”
(emphasis added)).
Petitioner also constructs an “alternative example” or “additional
configuration” in which Haupt’s headset hands off streamed audio from one
playback device to another based on signal strength, e.g., “transition[ing]
from playing streaming audio (e.g., internet radio) from Seshadri’s
cellphone 36 to Seshadri’s PDA 30 as the headphones/headset move out of
piconet range of the cellphone 36 and into piconet range of the PDA 30.”
Pet. 32–33 (citing Ex. 1003 ¶ 106). Petitioner’s alternative theory rests on
Dr. Cooperstock’s testimony which, in turn, merely repeats the Petition’s
arguments without providing any basis for the testimony. Ex. 1003 ¶ 106.
Here, Petitioner appears to rely on Seshadri’s general teaching that a
headset could communicate with any one of several devices (Ex. 1007 ¶ 43
(“Wireless headset 10 may establish a piconet with any one of the devices
30–37.”)); that more than one of these devices would have been capable of
transmitting digital audio content to the headset (id. ¶ 67); and that
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Seshadri-818 includes a general teaching of transitioning from one device
to another based on signal strength (Ex. 1013 ¶ 50). A user wearing the
headset, then, would roam from device to device, giving the user wider
range of movement. The Dissent appears to accept this reasoning.8
This, however, ignores Petitioner’s asserted evidence of reasons to
combine the references, namely, to maintain a connection between a
headset and a host while roaming within a WLAN network that is wider
than the piconet that could be established between the headset and that host.
Pet. 31 (citing Ex. 1007 ¶ 44; Ex. 1013 ¶¶ 26, 50; Ex. 1003 ¶ 103).
Specifically, Petitioner relies on Seshadri’s and Seshadri-818’s similar
“use-case[s] in which this transition between two different devices would
be useful,” namely the examples in which a cellular phone is used as an
intermediary between a headset and a wire line telephone, with the wire line
telephone serving as the single source. Pet. 31–32 (citing Ex. 1007 ¶ 44;

8 The Dissent also argues that a skilled artisan would have made the
combination because the headset receiving some audio would have been
better than it receiving no audio. We do not read the Petition as having
made this argument.
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Ex. 1013 ¶ 26).9 Dr. Cooperstock repeats this reasoning in his testimony.
Ex. 1003 ¶¶ 104–105.
Thus, Petitioner’s asserted evidence of reasons to combine, taken
directly from the two Seshadri references, describes the benefits of
maintaining the connection between a headset and a single source (i.e., the
host device), and transitioning between devices to maintain that connection.
Petitioner does not present persuasive evidence of reasons to transition a
headset from playing digital content from one source to playing digital
content from another source while roaming within a WLAN, e.g.,
transitioning among a phone call on a cellular phone, a podcast on a PDA,
streaming music on a PC, and an audio book on a laptop computer as the
user moves from room to room in their house, changing proximity of the
headset to the various devices. Even Petitioner’s citation to Haupt does not
provide such evidence. As noted above, Petitioner’s theory for claim
limitation 58[h] (“wherein the processor is 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

9 Petitioner’s argument, cited by the Dissent, that the method of Seshadri-
818’s Figure 8 “would ensure that the headset only transitions to a better
connection and therefore improves audio transmission to the headset,”
PO Resp. 30, is still in the context of maintaining a connection between a
headset and a single source. In particular, the testimony of Dr. Cooperstock
cited to support this argument continues that “[n]otably, Seshadri-818
teaches making a ‘determination’ about ‘which device, or access point, to
hand the communication off to’ and discloses an example of ‘determin[ing]
that device K is to facilitate the ongoing communication.’” Ex. 1003
¶ 101 (quoting Ex. 1013 ¶ 40). Paragraphs 39 and 40 of Seshadri-818
describe communication between headset 12 and device C, first using
access point H, which has a logical connection to device C, and second
using device K, which has a logical connection to device C.
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with the mobile, digital audio player”) has Seshadri’s PDA 30 and cellular
telephone 36 both communicating and receiving audio files from the same
server (i.e., the same source) “in the same manner as the operating element
BE taught by Haupt.” Pet. 26. Here, Petitioner refers to the server, not
either PDA 30 or cellphone 36, as “a source for the audio streams to which
Seshadri teaches the base units 16 have access.” Id. at 26–27.
In sum, the signal strength limitation requires a transition from
playing digital audio content from a first source to playing digital audio
content from a second source, with the digital audio player being the first
source. Petitioner’s evidence does not show this transition in the prior art.
At most, Petitioner’s evidence shows playing digital audio content from a
single source, while transitioning from one digital audio player to another to
maintain the earphones’ connection with the single source. Petitioner has
not presented a reference teaching “the headphone assembly transitions to
play digital audio content received wirelessly from a second digital audio
source via a second wireless communication link based on, at least, a signal
strength level for the second wireless communication link, wherein the
second digital audio source is different from the first digital audio source,”
as recited in claim 58, or provided a reason, with rational underpinning, to
combine prior art teachings to show this limitation.
Claims 59–62 depend, directly or indirectly, from claim 58, and the
Petition’s deficiency extends to these claims for the same reasons. Claims
4, 6, 8, 12, 13, 17, 18, 20, 22, 26, 27, 29, 31, 38, 40, 41, and 44 (the
remaining signal strength claims) depend, directly or indirectly, from
claim 1 and each adds a limitation substantially the same as the signal
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strength limitation of claim 58[i]. The Petition’s deficiency extends to
these claims as well, for the same reasons.
The Petition further challenges claims 1–3, 5, 10, 11, 14–16, 19, 23–
25, 28, 32–36, 39, and 42. Pet. 1–2. As noted above, however, each of
these claims is challenged in the ’592 IPR on nearly identical grounds.
Thus, it would be a waste of resources to institute a duplicative trial on
these claims when Petitioner has not shown a reasonable likelihood of
success in its challenges to the non-overlapping signal strength claims.
Accordingly, we exercise discretion and do not institute a trial on this
Petition, which Petitioner filed to challenge the signal strength claims. See
supra § II.G.
5. Summary
Petitioner filed this Petition to challenge the signal strength claims,
claims 4, 6, 8, 12, 13, 17, 18, 20, 22, 26, 27, 29, 31, 38, 40, 41, 44, and 58–
62. See supra § II.G; Notice 2–3. For the reasons addressed above in
connection with illustrative signal strength claim 58, Petitioner does not
show a reasonable likelihood of prevailing on any of the signal strength
claims. But for the signal strength claims, this Petition challenges the same
claims as the ’592 petition. See supra § II.G; Notice 2–3.
Accordingly, in the interest of efficiency and not duplicating the trial
based on the ’592 petition, we exercise our discretion and do not institute a
trial on this Petition.

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IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that the Petition is denied as to all challenged claims of
the ’934 patent; and
FURTHER ORDERED that no inter partes review is instituted.

Trials@uspto.gov Paper 11
571-272-7822 Entered: Oct. 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE, INC.,
Petitioner,
v.
KOSS CORP.,
Patent Owner.

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EASTHOM, Administrative Patent Judge, dissenting.
The excellent opinion of my colleagues above frames the “signal
strength” claims issue. I agree that absent a sufficient showing by
Petitioner on the “signal strength” claims, it would be an inefficient use of
the Board’s resources to institute on this serial Petition. However, I
respectfully disagree that the Petition fails to establish a reasonable
likelihood of prevailing on the signal strength claims.
Exemplary of the signal strength claims, claim 58 recites “[a]
headphone assembly comprising . . . wherein the headphone assembly
transitions to play digital audio content received wirelessly from a second
digital audio source via a second wireless communication link based on, at
least, a signal strength level for the second wireless communication link,
wherein the second digital audio source is different from the first digital
audio source.” In other words, the ’934 patent’s signal strength claims all
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recite a “headphone assembly.” These “headphone assembly” claims
necessarily do not require a first and second digital audio source to satisfy
the claims, because they are all “headphone assembly” device claims––i.e.,
not system or method claims. Therefore, the signal strength limitation in
the “headphone assembly” claims only requires the capability to receive
and play digital audio content from two different digital audio sources
based on relative signal strengths at the two different audio sources.
As the Majority recognizes, the Petition relies on an “alternative
example.” See Pet. 32–33. As the Majority also notes, as motivation for
this example, the Petition asserts that “such a transition would allow
Haupt’s modified headphones/headset ‘to roam within the local area
network and maintain its wireless headset functionality with one of its host
devices as it roams.’” Pet. 33 (citing Ex. 1013 ¶¶ 107–108).
In addition, Petitioner provides a wholly separate and sufficient other
reason for modifying the Haupt/Seshadri headphone assembly to be able to
transition from cellphone 36 to PDA 30 for institution purposes, for
example, to “ensure that the headset only transitions to a better connection
and therefore improves audio transmission to the headset.” Pet. 29–30
(citing Ex. 1013 ¶¶ 49–50; Ex. 1003 ¶ 100). In other words, listening to
some audio while a user roams is better than listening to nothing or
something of low quality. This reason, like the signal strength headphone
assembly claims and Petitioner’s showing, is agnostic as to whether each
distinct audio source PDA 30 or cellphone 36 also connects to the same
WLAN single upstream source. Moreover, even if the Petition’s showing
somehow relies upon a WLAN connection to an upstream server as part of
its roaming rationale, this is simply an alternative rationale to the rationale
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of providing the capability of some type of audio via a PDA 30 and
cellphone 36 Bluetooth connection.
Even with the WLAN connection as additional motivation, the
Petition does not limit its showing by asserting that the same audio files
must come from a single WLAN-connected server source. To the contrary,
the Petition specifically relies on Seshadri’s PDA 30 and cellphone 36 as
“different digital audio source[s]” to help show (via Seshadri-818) the
transitioning and playback of audio––without mentioning a WLAN-
connected server. See Pet. 15–16 (relying on “different digital audio
source[s]” 30 and 36), 24 (arguing that “the mobile, digital audio player
(e.g., PDA 30 or cellphone 36) is for transmitting digital audio content to
the headphone assembly (i.e., the modified WLAN headphones of Haupt)
via one or more ad hoc wireless communication links (i.e., the piconet
connection), such that the content is playable by the first and second
earphones.”). That the content is playable by “transmitting” via piconet
(i.e., not relaying) provides similar motivation.
Moreover, as a matter of well-settled claim construction principles, it
is immaterial to the structure of the claimed headphone assembly device
claims whether the different unclaimed digital audio sources (i.e., as
addressed in the Petition through the PDA 30 and cellphone 36 of Haupt
and Seshadri) connect to an upstream WLAN source and simply relay the
same audio from that source via PDA 30 and cellphone 36, or play or relay
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different audio signals from digital audio source PDA 30 or cellphone 36.10
Stated differently, the headphone assembly of the Haupt, Seshadri, and
Seshadri-818 only “sees” the digital audio signal transmitted from
Seshadri’s PDA 30 or cellphone 36 and is agnostic about whence the digital
audio originates. Petitioner sufficiently shows that the prior art headphone
assembly’s processor, circuitry, and antenna structure has the capability, or
is configured to, transition from a first digital audio source to a second
digital audio source and play back respective audio signals over a
piconet/Bluetooth connection. See Pet. 14–20, 23–24 (arguing that “in the
combination of Haupt and Seshadri, Haupt’s WLAN headphones would be
configured to couple with the mobile, digital audio players taught by
Seshadri (e.g., PDA 30 or cellphone 36) via a piconet connection (i.e., an ad
hoc network, such as Bluetooth)” (citing Ex. 1007 ¶¶ 40–42; Ex. 1003
¶ 90)), 28–31 (addressing the signal strength transition).
On this preliminary record, the signal strength limitation of the
device claims at issue here requires no more than the above-described
structure to support the stated audio device transition capability. 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 make a claim to
that old product patentable.”); In re Anderson, 662 F. App’x 958, 963 (Fed.
Cir. 2016) (nonprecedential) (“We also agree with the Board that the ‘for
use’ claim language is a statement of intended use. The ‘for use’ language

10 It is not clear on this preliminary record without input from the parties
whether the ’934 patent specification precludes a mere relay as a distinct
audio source. By analogy, a homeowner might refer to two electrical
outlets or two faucets as two distinct electrical or water sources, even
though the original source is the same in each case.
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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—depending on the claim language—if the reference discloses an
apparatus that is reasonably capable of operating so as to meet the claim
limitations . . . .”).
In particular, the Petition explains that “Seshadri describes that the
base unit 16 (e.g., the PDA 30 or cellphone 36) ‘may directly couple the
headset to multiple playback devices, audio streams or voice
communication networks such as radio, cellular, wireless voice or packet
data, public switched telephone networks (PSTN), private branch
exchanges or others known to those skilled in the art.” Pet. 26 (quoting Ex.
1007 ¶ 24). So Seshadri teaches that headphones wirelessly connect to
different audio sources, including cellphone 36 or PDA 30. See Pet. 15–16,
26. Seshadri specifically teaches that “[t]he present invention provides a
modular wireless headset with which to serve multiple incoming radio
streams.” Ex. 1007, code (60) (emphasis added). These multiple radio
streams of Seshadri are not restricted to a single audio source, as the
Petition recognizes.
For example, the Petition reasons that “[i]n this combination, the
wireless headphones would have utilized transmitter-receiver unit (EE) [of
Haupt] to communicate with mobile, digital audio players (e.g., PDA 30 or
cellphone 36 taught by Seshadri) via either the WLAN or ad-hoc interfaces
of the transmitter receiver unit (EE).” Pet. 15 (emphasis added). In other
words, the Petition presents an alternative “communication” connection
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“via either . . . WLAN or ad-hoc interfaces.” Id. This is not a mere relay
connection.
To illustrate the ad-hoc connections, the Petition annotates Seshadri’s
Figure 3 as follows:

Seshadri’s Figure 3 as annotated by Petitioner indicates headset 12
connecting with cellphone 36 and then PDA 30 as the user and headset
device roam, via WLAN interface 30 or ad hoc Bluetooth/piconet
connection 38. See Pet. 15–16, 31; Ex. 1007 ¶¶ 40–41. The Petition
combines the teaching above with Haupt’s teaching of “‘a transmitter-
receiver unit (EE) for wirelessly receiving first signals containing audio
signals’ where the ‘transmitter receiver unit (EE) is configured for
wirelessly emitting the identification network signal of the wireless
headphones.’” Pet. 14 (quoting Ex. 1004, code (60)). According to the
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Petition, “Haupt describes that the transmitter receiver unit (EE) of its
headphones is configured to communicate using Bluetooth, which is an ad
hoc wireless protocol.” Id. at 15 (citing Ex. 1004, 20:8–30; Ex. 1003 ¶ 75).
Petitioner also argues that
the mobile, digital audio player (e.g., PDA 30 or cellphone 36)
is for transmitting digital audio content to the headphone
assembly (i.e., the modified WLAN headphones of Haupt) via
one or more ad hoc wireless communication links (i.e., the
piconet connection), such that the content is playable by the first
and second earphones.
Id. at 24 (emphasis added). In other words, the Petition shows that an
artisan of ordinary skill would have combined Seshadri, Seshadri-818, and
Haupt’s headphone teachings so that Haupt’s headphone user could connect
to different audio sources and listen to audio via piconet (Bluetooth) as a
user roams. The ability to listen to playable content from each Bluetooth
connection is motivation apart from any relay connection.
The Petition states that combining Seshadri-818’s method of
measuring signal strength with the Haupt’s headphones would have been
obvious in order “to enable the WLAN headphones/headset ‘to roam within
the local area network and maintain its wireless headset functionality with
one of its host devices as it roams,’ as taught by Seshadri-818.” Pet. 31
(quoting Ex. 1013 ¶ 40; citing Ex. 1003 ¶ 103). Petitioner further argues
that “[i]this regard, the user of the WLAN headphones/headset would
enhance his/her mobility while maintaining high quality audio playback.”
Id. (citing Ex. 1003 ¶ 44). Enhancing mobility to listen to audio from
different piconet sources occurs regardless of any WLAN connection, even
if the WLAN connection adds more flexiblity. As the Majority recognizes,
the Petition relies on Seshadri-818’s Figure 8, which refers to transitioning
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between piconet devices––i.e., like Seshadri’s cellphone 36 and PDA 30.
Seshadri-818 does not limit the benefits of this teaching to a single-source
upstream WLAN connection. For example, Seshadri-818 specifically states
that “piconet RF interfaces allow point-to-point communication between
the associated devices.” Ex. 1007 ¶ 42. This “communication” benefit is
not a mere relay connection.
The Majority contends that “[the claims] require a transition from
playing digital audio content from a first source to playing digital audio
content from a second source, with the digital audio player being the first
source.” Supra 28. The majority also contends that “Petitioner’s evidence
does not show this transition in the prior art.” See id. But as discussed
above, Petitioner’s evidence and rationale at least shows for institution
purposes the capability of the headphone assembly to transition from
cellphone 36 to PDA 30, based on at least a piconet/Bluetooth connection,
as discussed above. See Pet. 15–16, 31.
The Majority also contends that “[a]t most, Petitioner’s evidence
shows playing digital audio content from a single source, while
transitioning from one digital audio player to another to maintain the
earphones’ connection with the single source.” Supra 29 (emphasis added).
But as indicated above, Petitioner’s showing in the alternative example and
throughout the Petition includes communication transitions from cellphone
36 to PDA 30, two distinct digital audio sources regardless of any
additional single source connection upstream of cellphone 36 or PDA 30.
Relative to the claimed headphone assembly, cellphone 36 and PDA 30
represent two distinct digital audio sources that show for institution
purposes that the modified headset assembly has the capability to transition
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from one to the other as claim 58 requires, regardless of whether these two
sources merely relay the same music files from a single upstream source via
a WLAN network host server device. See ParkerVision, 903 F.3d at 1361
(“[A] prior art reference may anticipate or render obvious an apparatus
claim—depending on the claim language—if the reference discloses an
apparatus that is reasonably capable of operating so as to meet the claim
limitations . . . .”). Even if a single upstream WLAN-connected server is an
issue to consider further according to the Majority, Petitioner also generally
refers to connecting to upstream WLAN “servers” in the plural as part of a
WLAN connection––i.e., not necessarily a single source. See Pet. 26
(“Seshadri describes that these mobile, digital audio players would have
themselves been configured to communicate with remote network-
connected servers, like the public server OS taught by Haupt.”).11
On this preliminary record, the signal strength claims at issue here
“unite[] old elements with no change in their respective functions.” KSR

11 Another “wherein” clause in claim 58 recites “wherein the processor is
configured to . . . initiate transmission of a request to a remote, network-
connected server that is in wireless communication with the mobile, digital
audio player.” The “first digital audio source” in the signal strength
“wherein” clause lacks antecedent basis, because the processor wherein
clause refers generally to a “digital audio player”––i.e., “not a first digital
audio source.” See supra § II.D. In any event, the Petition relies on
network servers in general in discussing the wherein-processor-server
limitation. See Pet. 24–28 (pointing to “one or more remote, network-
connected servers (e.g., private server PS or public server OS) is shown in
Figure 1 of Haupt (reproduced below)”). Setting aside that this “server” is
likely an intended use limitation not required by the headphone assembly
device claim, the “signal strength” clause does not recite or otherwise
require this server in any form. See Schreiber, 128 F.3d at 1477 (“It is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable.”).
IPR2021-00693
Patent 10,469,934 B2

10
550 U.S. at 415–16 (quoting Great Atlantic & Pacific Tea Co. v.
Supermarket Equipment Corp., 340 U.S. 147, 152–153 (1950)). “For over
a half century, the Court has held that a ‘patent for a combination which
only unites old elements with no change in their respective functions . . .
obviously withdraws what already is known into the field of its monopoly
and diminishes the resources available to skillful men.’” Id. at 415–16
(quoting Great Atlantic, 340 U.S. at 152–153).
Based on the foregoing discussion, I respectfully dissent from the
Majority’s holding that the Petition fails to establish a reasonable likelihood
of prevailing on the signal strength claims.

FOR PETITIONER:
Walter Renner
David Holt
Joel Henry
FISH & RICHARDSON P.C.
axf-ptab@fr.com
holt2@fr.com
jhenry@fr.com
FOR PATENT OWNER:
Mark Knedeisen
Laura Murray
Brian Bozzo
K & L GATES LLP
mark.knedeisen@klgates.com
lauren.murray@klgates.com
brian.bozzo@klgates.com