Bose Corp v. Koss Corp

1. Case Identification

• Case #: IPR2021-00297
• Patent #: 10,368,155
• Filed: December 7, 2020
• Petitioner(s): Bose Corporation
• Patent Owner(s): Koss Corporation
• Challenged Claims: 1-14

2. Patent Overview

• Title: Wireless Headphone Technology
• Brief Description: The ’155 patent describes a wireless headphone assembly configured to "transition automatically" from playing digital audio received via a first wireless network to playing digital audio received via a second wireless network. The specification primarily describes this transition occurring when the headphone goes out of range of a first "ad hoc" network (e.g., Bluetooth) and connects to a second "infrastructure" network (e.g., Wi-Fi).

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-14 by Pelland under 35 U.S.C. §102

• Prior Art Relied Upon: Pelland (International Publication No. WO 2009/126614).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the challenged claims of the ’155 patent are not entitled to their claimed priority date. The petition asserted that claim 1 was broadened to remove limitations present in the priority applications, specifically (1) that the transition occurs upon losing connection to the first network, and (2) that the transition is between an ad hoc and an infrastructure network. Due to this alleged lack of written description support, Petitioner contended the claims’ effective filing date is that of the ’155 patent itself (November 2018). This makes Pelland—the 2009 publication of the ’155 patent’s ancestor PCT application—prior art. Because Pelland shares the same written description as the ’155 patent, it was argued to disclose embodiments satisfying every limitation of the challenged claims, thereby anticipating them.

Ground 2: Obviousness over Rezvani and Skulley - Claims 1-4, 6-8, and 14 are obvious over Rezvani in view of Skulley under 35 U.S.C. §103

• Prior Art Relied Upon: Rezvani (Application # 2007/0165875) and Skulley (Patent 6,856,690).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Rezvani taught the core invention by disclosing a wireless multi-media headset that performs a "seamless handoff" of digital audio (VoIP calls) between different wireless networks (e.g., cellular and Wi-Fi). This functionality was argued to meet the "transition automatically" limitation of claim 1. Rezvani, however, focused on functionality and did not specify common physical headset design details. Skulley was cited to supply these known details, as it described conventional headset configurations, including stereo (two-earphone) designs and various form factors such as "ear buds," "on-ear," and "over-ear" headphones with headbands.
  • Motivation to Combine: A POSITA would combine Rezvani's advanced handoff capability with Skulley's conventional two-earphone stereo design to create a superior product. Rezvani's disclosure of "high fidelity sound" would have motivated using a stereo configuration for an improved music and voice call experience, which Skulley taught was a well-known and predictable design choice.
  • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved integrating Rezvani's wireless subsystems into one of Skulley's well-understood and standard physical headphone assemblies, a routine design task.
  • Key Aspects: The petition emphasized that Patent Owner Koss, during prosecution of a European counterpart patent, had conceded that Rezvani disclosed a similar, and even narrower, "transition automatically" limitation.

Ground 3: Obviousness over Nakagawa and Wilson - Claims 1-3, 6-8, 10, and 14 are obvious over Nakagawa in view of Wilson under 35 U.S.C. §103

• Prior Art Relied Upon: Nakagawa (Application # 2003/0223604) and Wilson (Patent 7,457,649).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Nakagawa disclosed a wireless headset that "automatically switches" the audio source based on priority level. For example, it could switch from playing music from a portable audio player to an incoming call from a mobile phone, thereby teaching an automatic transition between different wireless networks and audio streams. While Nakagawa disclosed the control logic, it did not detail the headset's physical form factor or power source. Wilson was introduced to provide these elements, as it taught a conventional stereo wireless headset with a headband, two earphones, a rechargeable battery, and a compatible docking station for charging.
  • Motivation to Combine: A POSITA would have been motivated to implement Nakagawa's priority-based switching functionality into a conventional and user-friendly headset design like that shown in Wilson. This combination would create a commercially viable product by adding Nakagawa's useful features to a known physical form factor that included the expected benefits of a rechargeable battery and docking station.
  • Expectation of Success: The combination required only ordinary skill to implement Nakagawa’s control logic in Wilson's standard hardware, as Nakagawa's own figures depicted a two-earpiece headset consistent with Wilson's design.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Rezvani-Skulley with Feder (for transitions based on signal strength), Hind (for receiving remote firmware updates), Rosener (for true wireless earbud designs), and Wilson (for adding a docking station). Additional combinations based on Nakagawa were also presented.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) based on Fintiv factors, asserting that the parallel district court litigation was in its infancy. The petition was filed promptly (within six weeks of service and before an answer was due), no trial date was scheduled in Petitioner's specific case, and litigation investment had been minimal.
• Petitioner also argued against denial under §325(d), contending that the petition raised new art and arguments. It was argued that the USPTO materially erred by allowing the claims because key prior art like Rezvani, though cited, was never substantively evaluated or applied during prosecution, and the Examiner did not have the benefit of the combinations or expert testimony presented in the petition.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of the ’155 patent as unpatentable.