Apple Inc v. Koss Corp

1. Case Identification

• Case #: IPR2021-00255
• Patent #: 10,298,451
• Filed: November 25, 2020
• Petitioner(s): Apple, Inc.
• Patent Owner(s): KOSS Corporation
• Challenged Claims: 1-21

2. Patent Overview

• Title: Configuring Wireless Devices for a Wireless Infrastructure Network
• Brief Description: The ’451 patent describes a system for providing a wireless device (e.g., earphones) with credentials for an infrastructure wireless network (e.g., Wi-Fi). The system involves a user inputting credentials on a website hosted by a remote server, which are then passed through an intermediary mobile computer to the target wireless device via a local ad hoc link.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Brown and Scherzer - Claims 1, 6, 11-13, and 15-20 are obvious over Brown in view of Scherzer.

• Prior Art Relied Upon: Brown (Patent 9,021,108) and Scherzer (Application # 2007/0033197).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Brown disclosed the core system of the ’451 patent, including a first electronic device (e.g., a tablet) that automatically receives network configuration data from a second mobile computer device (e.g., a smartphone) over a local, ad hoc wireless link (e.g., Bluetooth). This process was intended to avoid the inconvenience of manual data entry. However, Brown was less focused on how the second device initially obtains these credentials. Petitioner asserted that Scherzer remedied this by teaching a system where a community of users shares network credentials (e.g., SSIDs and passwords) through a central provider application server accessible via the Internet. The combination of Brown’s local sharing mechanism with Scherzer’s server-based credential repository allegedly disclosed all limitations of independent claim 1, including the host server that receives, stores, and provides credential data for the infrastructure network.
  • Motivation to Combine: Petitioner contended a POSITA would combine these references to improve the functionality of Brown’s system. Brown’s mobile device could be enhanced by installing a Scherzer-like software client, allowing it to access a large, server-based repository of Wi-Fi credentials for numerous locations. This would increase the number of networks the mobile device could connect to and subsequently share with the first electronic device, directly addressing the problem of obtaining credentials for new networks while mobile. This combination advanced Brown's goal of automating network configuration and Scherzer's goal of providing internet access from any location.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved integrating a known client-server architecture for credential management (Scherzer) with a known system for local device-to-device data transfer (Brown), both using conventional wireless technologies.

Ground 1B: Obviousness over Brown, Scherzer, and Baxter - Claims 2, 7-10, and 21 are obvious over Brown, Scherzer, and Baxter.

• Prior Art Relied Upon: Brown (Patent 9,021,108), Scherzer (Application # 2007/0033197), and Baxter (Application # 2007/0245028).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds upon the Brown-Scherzer combination by adding the teachings of Baxter. Petitioner argued that Baxter disclosed a conventional client-server system for streaming media content (audio and video) from a remote server to a client device, such as a smartphone. The claims challenged under this ground added limitations related to the electronic device being an acoustic speaker or video player and being capable of streaming and playing content from a remote server after connecting to the network. Petitioner asserted that it would have been obvious to implement the electronic device from the Brown-Scherzer combination with the media streaming capabilities taught by Baxter.
  • Motivation to Combine: The primary motivation was to add a common and desirable feature to the network-enabled device. Once the electronic device gained internet access via the Brown-Scherzer method, a POSITA would have found it an obvious and logical next step to enable it to perform common internet-based functions, such as streaming audio and video. Baxter provided a well-known and conventional blueprint for implementing such functionality, making it a simple design choice to enhance the utility of the end device.
  • Expectation of Success: Integrating known media streaming functionality into a network-connected device was a routine and predictable task for a POSITA at the time.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on the core Brown and Scherzer combination, augmented with single references to add known features. These included:

  • Ground 1C (Claims 3-4): Adding Drader (Application # 2011/0025879) to teach implementing the electronic device with a camera and lighting system.
  • Ground 1D (Claim 5): Adding Ramey (Application # 2010/0307916) to teach implementing the electronic device as a medical device (e.g., integrating a blood glucose monitor).
  • Ground 1E (Claim 14): Adding Gupta (Application # 2010/0165879) to teach that the credential data would additionally include encryption type data for the Wi-Fi network, an obvious security enhancement.

4. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. The core arguments were:
  • The parallel litigation (KOSS Corporation v. Apple Inc., W.D. Tex.) was in a very early stage, with the IPR petition filed within four months of service and before any substantive court orders, claim construction, or significant discovery had occurred.
  • The scheduled trial date in the district court was uncertain and fell less than two months before the statutory deadline for the PTAB's Final Written Decision (FWD), weighing against denial.
  • The invalidity grounds presented in the petition relied on prior art combinations that were not before the USPTO during prosecution and had not yet been raised in the district court, resulting in minimal overlap of issues.
  • The petition presented strong evidence of unpatentability, which weighs in favor of institution to serve the public interest in correcting erroneously issued patent claims.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-21 of Patent 10,298,451 as unpatentable under 35 U.S.C. §103.