DCT
6:21-cv-00495
Apple Inc v. Koss Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Apple Inc. (California)
- Defendant: Koss Corporation (Delaware/Wisconsin)
- Plaintiff’s Counsel: Goldman Ismail Tomaselli Brennan & Baum LLP
- Case Identification: 5:20-cv-05504, N.D. Cal., 08/07/2020
- Venue Allegations: Plaintiff Apple alleges venue is proper in the Northern District of California because it is headquartered there, and because Defendant Koss has previously alleged that infringing acts occurred within the district and traveled to the district for licensing discussions concerning the patents-in-suit.
- Core Dispute: Plaintiff seeks a declaratory judgment that its AirPods and HomePod products do not infringe five patents owned by Defendant, and further alleges that Defendant breached a confidentiality agreement by filing a prior lawsuit in Texas.
- Technical Context: The technology relates to wireless audio devices, specifically earphones and speakers, and methods for connecting and configuring them on wireless networks.
- Key Procedural History: This action was filed in response to a patent infringement lawsuit brought by Koss against Apple on July 22, 2020, in the Western District of Texas. Apple’s complaint alleges that Koss’s Texas suit violates an August 6, 2017 Confidentiality Agreement that prohibited the use of licensing communications in litigation. The complaint also notes that Koss has asserted certain of the patents-in-suit against other manufacturers, including Bose, Plantronics, and Skullcandy.
Case Timeline
| Date | Event |
|---|---|
| 2008-04-07 | Earliest Priority Date (’025, ’934, ’982, ’325 Patents) |
| 2013-03-15 | Earliest Priority Date (’451 Patent) |
| 2017-08-06 | Confidentiality Agreement effective date |
| 2019-02-12 | U.S. Patent No. 10,206,025 Issues |
| 2019-05-21 | U.S. Patent No. 10,298,451 Issues |
| 2019-11-05 | U.S. Patent No. 10,469,934 Issues |
| 2019-11-26 | U.S. Patent No. 10,491,982 Issues |
| 2019-12-10 | U.S. Patent No. 10,506,325 Issues |
| 2020-07-22 | Koss files patent infringement complaint in W.D. Texas |
| 2020-08-07 | Apple files this complaint in N.D. California |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,206,025 - "System With Wireless Earphones"
- Patent Identification: U.S. Patent No. 10206025, "System With Wireless Earphones," issued February 12, 2019.
The Invention Explained
- Problem Addressed: The patent background describes the inconvenience of cords on headphones for portable digital audio players and notes that contemporary cordless headphones were often "quite large and not in-ear type phones" (’025 Patent, col. 2:40-62).
- The Patented Solution: The invention describes a wireless earphone system that can receive streaming audio from a data source (like an MP3 player) over a direct, ad-hoc wireless network. The system is designed to "transition automatically" to a common infrastructure wireless network (e.g., a Wi-Fi LAN) when the ad-hoc connection is lost, thereby extending the user's listening range. The earphones can also connect to a remote host server over the internet to stream content like internet radio (’025 Patent, Abstract; col. 2:1-17).
- Technical Importance: The described technology aims to provide uninterrupted audio playback by seamlessly switching between a short-range, direct-to-device connection and a longer-range, network-based connection, enhancing user mobility.
Key Claims at a Glance
- The complaint asserts non-infringement of independent claim 1 (Compl. ¶69).
- Claim 1 requires a system comprising:
- a mobile, digital audio player;
- a headphone assembly with first and second earphones;
- a remote, network-connected server;
- wherein the mobile player transmits audio content to the headphone assembly via an ad hoc wireless link; and
- wherein a processor in the headphone assembly, upon activation of a user-control, initiates transmission of a request to the remote, network-connected server (’025 Patent, col. 18:1-33).
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,298,451 - "Configuring Wireless Devices For A Wireless Infrastructure Network"
- Patent Identification: U.S. Patent No. 10298451, "Configuring Wireless Devices For A Wireless Infrastructure Network," issued May 21, 2019.
The Invention Explained
- Problem Addressed: The patent addresses the technical challenge of configuring a wireless device to connect to an infrastructure Wi-Fi network for the first time, particularly for devices lacking a screen or keyboard, "without physically connecting the wireless device to a computer in order to configure it" (’451 Patent, col. 2:44-48).
- The Patented Solution: The invention is a system for onboarding a wireless device onto a network. It involves a remote server hosting a website where a user inputs network credentials (e.g., Wi-Fi password). A separate "content access point" device communicates with the wireless device via an ad-hoc network, retrieves the credentials from the remote server, and passes them to the wireless device, which then uses the credentials to connect to the main infrastructure network (’451 Patent, Abstract).
- Technical Importance: This method provides a user-friendly way to provision "headless" internet-of-things (IoT) devices onto a secure Wi-Fi network without requiring direct physical connection or complex setup procedures on the device itself.
Key Claims at a Glance
- The complaint asserts non-infringement of independent claim 1 (Compl. ¶74).
- Claim 1 requires a system comprising:
- a wireless access point, an electronic device, a mobile computer device, and one or more host servers;
- the mobile computer device is for transmitting to the electronic device... credential data for the infrastructure wireless network stored by the one or more host servers;
- the electronic device is for, upon receiving the credential data, connecting to the wireless access point (’451 Patent, col. 8:1-51).
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,469,934 - "System With Wireless Earphones"
- Patent Identification: U.S. Patent No. 10469934, "System With Wireless Earphones," issued November 5, 2019 (Compl. ¶57).
- Technology Synopsis: This patent is from the same family as the ’025 Patent and addresses the same technical problem of extending the range of wireless earphones by enabling them to transition automatically from a direct ad-hoc network to a broader infrastructure network and connect to remote servers (’934 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶79).
- Accused Features: Apple’s AirPods are accused. The complaint alleges non-infringement based on the same theory as for the ’025 Patent: that AirPods do not initiate transmissions to a "remote, network-connected server" but only to a "local device" (Compl. ¶81).
U.S. Patent No. 10,491,982 - "System With Wireless Earphones"
- Patent Identification: U.S. Patent No. 10491982, "System With Wireless Earphones," issued November 26, 2019 (Compl. ¶58).
- Technology Synopsis: This patent, from the same family as the ’025 Patent, claims a specific physical configuration for wireless earphones. The invention is directed to the structural design and how the earphones are worn by a user (’982 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶84).
- Accused Features: Apple’s AirPods are accused. The non-infringement theory is based on a physical mismatch, alleging that claim 1 requires an "ear canal portion that is inserted into an ear of the user," a feature Apple claims its AirPods lack (Compl. ¶¶ 84, 86).
U.S. Patent No. 10,506,325 - "System With Wireless Earphones"
- Patent Identification: U.S. Patent No. 10506325, "System With Wireless Earphones," issued December 10, 2019 (Compl. ¶59).
- Technology Synopsis: This patent, also from the same family, claims another specific physical configuration for wireless earphones. The claimed invention includes a "curved hanger bar" designed to rest on the user's ear in a particular manner to secure the earphone (’325 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶89).
- Accused Features: Apple’s AirPods are accused. The non-infringement theory is based on a physical mismatch, alleging AirPods do not have a "curved hanger bar" that "rests upon an upper external curvature of an ear... behind an upper portion of an auricula" as required by the claim (Compl. ¶¶ 89, 91).
III. The Accused Instrumentality
Product Identification
- Apple Inc.’s AirPods and HomePod products (Compl. ¶3).
Functionality and Market Context
- The complaint identifies the AirPods as wireless earphones and the HomePod as a wireless speaker (Compl. ¶¶ 3, 11, 75). The specific functionalities relevant to the non-infringement allegations are how these devices connect to networks and other devices.
- The complaint alleges that AirPods "only communicate with, and initiate transmission to, a local device" rather than a remote server (Compl. ¶71).
- It further alleges that the HomePod connects to a wireless network by "receiving data stored on another local device" rather than receiving "credential data" from a remote host server (Compl. ¶76).
- The complaint positions these products as part of Apple's "pioneering and revolutionary products" that reflect decades of innovation (Compl. ¶10).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
U.S. Patent No. 10,206,025 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a remote, network-connected server that is in wireless communication with the mobile, digital audio player | The complaint alleges Apple's system does not use a "remote, network-connected server" in the manner claimed. | ¶71 | col. 18:21-23 |
| wherein the processor is for, upon activation of a user-control of the headphone assembly, initiating transmission of a request to the remote, network-connected server. | The complaint alleges that AirPods do not initiate transmission of a request to any remote server, but only to a local device (e.g., a paired iPhone). | ¶71 | col. 18:30-33 |
Identified Points of Contention
- Scope Questions: The central dispute may turn on the definition of "remote, network-connected server." Does a user's smartphone, which is itself connected to a network and remote from the earphone's processor, meet this definition? Apple’s position suggests it does not, framing the phone as a "local device" (Compl. ¶71). The patent's examples of a "host server" and an "Internet radio server" may support an interpretation that requires a server distinct from the user's personal mobile device (’025 Patent, col. 2:11-16).
- Technical Questions: What is the technical nature of a "request" initiated by the AirPods? The complaint's allegation implies that any such request is directed only to its paired local device. Evidence will be needed to establish the destination and nature of control signals initiated by user actions on the AirPods.
U.S. Patent No. 10,298,451 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| the mobile computer device is for transmitting to the electronic device ... credential data for the infrastructure wireless network stored by the one or more host servers | The complaint alleges the HomePod is not sent credential data that is stored on one or more host servers. | ¶76 | col. 8:42-47 |
| the electronic device is for, upon receiving the credential data... connecting to the wireless access point via the infrastructure wireless network using the credential data | The complaint alleges that the HomePod connects to a network by receiving data stored on another local device, not by receiving credential data from a host server via a mobile computer device. | ¶76 | col. 8:47-51 |
Identified Points of Contention
- Scope Questions: The analysis may focus on whether Apple's iCloud Keychain, which can sync Wi-Fi passwords across a user's devices, constitutes the claimed "one or more host servers" that "store" the "credential data." Apple’s argument suggests a direct local transfer, which would not meet the claim limitations (Compl. ¶76).
- Technical Questions: What is the specific data flow when a HomePod is configured for a new Wi-Fi network? The case may require an analysis of Apple's network setup protocols to determine if credential data is sourced from a remote server as claimed, or if it is transferred directly from the local pairing device's memory.
V. Key Claim Terms for Construction
For the ’025 and ’934 Patents
- The Term: "remote, network-connected server"
- Context and Importance: This term is critical because Apple's primary non-infringement argument for two of the five patents is that its AirPods communicate only with a "local device," not a "remote... server" (Compl. ¶71). The case may hinge on whether a paired smartphone, which is itself network-connected, qualifies as the claimed server.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify that the server must be unaffiliated with the user or located on the public internet. One might argue that from the earphone's perspective, any separate network-connected device from which it pulls data could be considered a "remote server."
- Evidence for a Narrower Interpretation: The specification repeatedly describes the server in the context of an "Internet radio server" or a "host server" that exists as a distinct entity on a WAN, separate from the user's personal "digital audio player" (’025 Patent, col. 2:13-17; Fig. 2D). This may support a narrower construction that excludes the user's own smartphone.
For the ’451 Patent
- The Term: "credential data for the infrastructure wireless network stored by the one or more host servers"
- Context and Importance: Apple's non-infringement defense for the '451 Patent rests on the assertion that the HomePod receives credentials from a "local device," not from storage on "host servers" (Compl. ¶76). The interpretation of this entire phrase will determine whether Apple's architecture infringes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Practitioners may argue that a cloud-based service like iCloud Keychain, which stores and syncs passwords, functions as the claimed "host servers." Under this view, a local iPhone retrieving the password from iCloud and passing it to the HomePod would be sourcing data "stored by" the host servers.
- Evidence for a Narrower Interpretation: The patent describes a process where a user explicitly inputs credentials into a website hosted by the remote server, which then stores them (’451 Patent, col. 4:50-65). This may suggest that the "storing" function must be the primary record, rather than a sync/backup service like iCloud, and that the data must originate from that server during the setup process.
VI. Other Allegations
- Indirect Infringement: The complaint states that Koss's Texas Complaint alleges induced and contributory infringement (Compl. ¶¶ 52-53). Apple contends that Koss's only basis for alleging Apple's pre-suit knowledge—a required element for these claims—is derived from communications that are barred from use in litigation by the parties' Confidentiality Agreement (Compl. ¶¶ 52-53).
- Willful Infringement: The complaint notes that Koss alleges willful infringement (Compl. ¶54). Similar to the indirect infringement claims, Apple argues that Koss's only basis for alleging the knowledge required for willfulness is barred by the Confidentiality Agreement (Compl. ¶54).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue will be the enforceability and scope of the Confidentiality Agreement: Before the patent merits are reached, the court may need to decide whether Koss’s Texas lawsuit, and its alleged reliance on licensing communications to establish knowledge for willfulness and indirect infringement, constitutes a breach of contract that impacts the litigation.
- A core issue will be one of architectural definition: For the network-based patents (’025, ’451, ’934), can the components of Apple's integrated ecosystem (e.g., a paired iPhone, iCloud Keychain) be construed to meet the claimed elements of a "remote, network-connected server" or "host servers," or is there a fundamental mismatch with the patent's description of distinct, separate systems?
- A key evidentiary question will be one of physical fact: For the hardware-based patents (’982, ’325), the dispute will likely turn on straightforward claim construction followed by a factual comparison. Do the AirPods physically insert "into an ear canal" or possess a structure that functions as a "curved hanger bar" resting behind the ear, as those terms are defined in the claims?