Apple Inc v. Koss Corp

1. Case Identification

• Case #: IPR2021-00305
• Patent #: 10,506,325
• Filed: December 15, 2020
• Petitioner(s): Apple, Inc.
• Patent Owner(s): Koss Corporation
• Challenged Claims: 1-4, 9-10, 14-18

2. Patent Overview

• Title: SYSTEM WITH WIRELESS EARPHONES
• Brief Description: The ’325 patent describes a wireless audio system comprising a pair of physically and electrically separate wireless earphones. Each earphone contains its own transceiver, processor, microphone, and rechargeable power source, and the system includes a docking station for holding and charging the earphones.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Rosener and Huddart - Claims 1-2 and 16-18 are obvious over Rosener in view of Huddart.

• Prior Art Relied Upon: Rosener (Application # 2008/0076489) and Huddart (Patent 7,627,289).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rosener taught the core elements of claim 1, including a pair of physically and electrically separate wireless earphones, each with a body portion, an earbud, a wireless communication circuit, a processor, an acoustic transducer, a microphone, and an antenna. Rosener also disclosed an optional earloop corresponding to the claimed "curved hanger bar." Petitioner contended that Huddart cured Rosener's lack of explicit disclosure regarding rechargeable batteries and a charging case by teaching a "charger/carrier" (a docking station) with an internal battery for storing and charging wireless earbuds. Huddart's teachings of a primary charger cable for the carrier met the "power cable" limitation. The combination of Rosener's earphones with Huddart's charging system rendered the limitations of claim 1 obvious. Dependent claims 2, 16, 17, and 18 were allegedly met by Rosener's disclosure of data buffers for synchronizing streaming audio and by the combination with Huddart's teachings on inductive charging.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Huddart with Rosener to add the conventional and highly desirable feature of rechargeability to Rosener’s earphone system. Huddart’s charger/carrier also addressed the practical need for a storage and protection solution for Rosener’s physically separate earphones, which could be easily lost. Both references addressed the same problem of providing stereo audio without a headband and shared a common assignee and inventor, further prompting their combination.
  • Expectation of Success: A POSITA would have a high expectation of success in incorporating Huddart’s well-understood charging and storage technology into Rosener’s earphone design, as it involved the application of known solutions to a known problem.

Ground 1B: Obviousness over Rosener, Huddart, and Haupt - Claims 3 and 4 are obvious over Rosener, Huddart, and Haupt.

• Prior Art Relied Upon: Rosener (Application # 2008/0076489), Huddart (Patent 7,627,289), and Haupt (WO 2006/042749).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Rosener-Huddart combination from Ground 1A. Petitioner asserted that Haupt supplied the limitations of claim 3 by teaching wireless headphones with user controls (e.g., buttons) that, when activated, initiate a request to a remote network server over a WLAN. Haupt further disclosed the headphones receiving a response from the server, such as downloaded audio files, which met the limitations of claim 4.
  • Motivation to Combine: A POSITA would combine Haupt’s teachings with the Rosener-Huddart system to add valuable new functionality, such as enabling the "non-physical purchase of audio data" by connecting to an internet server. Haupt’s use of a WLAN interface was taught to be advantageous for higher data transfer speeds, improving the performance of the base earphone system when streaming audio from the internet.

Ground 1C: Obviousness over Rosener, Huddart, and Price - Claims 9, 10, and 14 are obvious over Rosener, Huddart, and Price.

• Prior Art Relied Upon: Rosener (Application # 2008/0076489), Huddart (Patent 7,627,289), and Price (Application # 2006/0026304).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground also built upon the Rosener-Huddart combination. Petitioner argued that Price taught the limitations of claims 9 and 10 by disclosing a system for wirelessly delivering software updates, including firmware upgrades, from a remote server to electronic devices like MP3 players. The processor circuits in the combined Rosener-Huddart earphones would be configured to receive these firmware upgrades wirelessly. Claim 14, which added streaming audio elements to claim 10, was allegedly obvious for the same reasons as claim 2.
  • Motivation to Combine: A POSITA would have recognized that the Rosener-Huddart earphones were complex digital devices, similar to the music players described in Price, that would benefit from firmware upgrades to improve reliability, functionality, and compatibility. It would have been obvious to integrate Price's established method for firmware updates into the earphone system to realize these benefits.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 15 is obvious over Rosener, Huddart, and Paulson (for adding push-to-talk microphone functionality) and that claims 16 and 17 are obvious over Rosener, Huddart, and Vanderelli (for adding passive wireless charging via RF radiation).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §325(d) or §314(a).
• Regarding §325(d), Petitioner contended that the asserted prior art combinations and arguments were not previously before the U.S. Patent and Trademark Office, as key references like Huddart and Price were never considered. Furthermore, Petitioner argued that the examiner made a material error in evaluating Rosener during prosecution by overlooking explicit disclosures that taught claim limitations the examiner found to be missing.
• Regarding §314(a) and the Fintiv factors, Petitioner argued that the parallel district court litigation was in its infancy, with no substantive orders issued and a trial date scheduled only two months before the statutory deadline for a Final Written Decision (FWD), making the date uncertain. Petitioner asserted that there was minimal overlap between the IPR and the court proceeding, which would likely narrow the asserted claims significantly for trial, favoring institution to efficiently resolve the patentability of all challenged claims.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 9-10, and 14-18 of the ’325 patent as unpatentable.