Apple Inc v. Koss Corp

1. Case Identification

• Case #: IPR2021-00546
• Patent #: 10,206,025
• Filed: February 22, 2021
• Petitioner(s): Apple, Inc.
• Patent Owner(s): Koss Corporation
• Challenged Claims: 1-3, 6, 8, 10-13, 16, 18, 20-22, 25, 27, 29-31, 34, 36, 38-43, 46, 48, and 51-56

2. Patent Overview

• Title: SYSTEM WITH WIRELESS EARPHONES
• Brief Description: The ’025 patent discloses a system of wireless earphones that receive audio data over a network. The system allows a user to listen to digital audio content and, via a user control, transmit a request over the wireless network to a remote server.

3. Grounds for Unpatentability

Ground 1: Obviousness over Haupt and Seshadri - Claims 1, 2, and 52 are obvious over Haupt in view of Seshadri.

• Prior Art Relied Upon: Haupt (WO 2006/042749) and Seshadri (Application # 2006/0166716).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Haupt taught the core system of a wireless headphone unit capable of connecting to remote servers via a WLAN access point. This headphone unit included a processor (control unit), wireless communication circuit (transmitter/receiver), earphones with transducers, a microphone, and a power source. Petitioner contended that Seshadri taught a modular wireless headset that connects to multiple local audio sources (e.g., MP3 players, cell phones) using both WLAN and ad-hoc (e.g., Bluetooth) networks, and allows for transitioning between them. The combination allegedly rendered claim 1 obvious by teaching a system where Haupt’s server-connected headphones are modified to also connect to a local mobile audio player via an ad-hoc link, as taught by Seshadri. Dependent claim 2 was allegedly met by this combination, as Haupt taught the "second audio play mode" (streaming from a remote server) and Seshadri taught the "first audio play mode" (playing content from a local device).
  • Motivation to Combine: A POSITA would combine Haupt and Seshadri to create a more versatile and commercially desirable headphone. This would allow users to access audio from both remote internet sources (per Haupt) and local personal devices (per Seshadri), ensuring functionality even when a WLAN access point is unavailable. Seshadri’s teachings on dual communication pathways would provide benefits of improved audio quality, signal strength, and power conservation.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references described analogous technologies (wireless headphones) and disclosed the use of standard wireless protocols like WLAN and Bluetooth, which were known to be compatible.

Ground 2: Obviousness over Haupt, Seshadri, and Paulson - Claims 3, 6, and 8 are obvious over Haupt and Seshadri in view of Paulson.

• Prior Art Relied Upon: Haupt (WO 2006/042749), Seshadri (Application # 2006/0166716), and Paulson (Patent 7,551,940).
• Core Argument for this Ground:
  • Prior Art Mapping: Building on the combination of Haupt and Seshadri, Petitioner introduced Paulson to teach specific microphone functionalities. Paulson disclosed a voice communication device with a switch for push-to-talk functionality, allowing a user to physically mute and unmute the microphone. Petitioner argued this directly taught the limitation in claims 3 and 6 of processing audible utterances "in response to activation of the microphone by the user." For claim 8, Paulson's teaching of activating a microphone to transmit data, combined with Haupt’s teaching of transmitting a network ID, allegedly rendered obvious the transmission of data "about the headphone assembly to a remote device" upon microphone activation.
  • Motivation to Combine: A POSITA would incorporate Paulson’s push-to-talk switch into the Haupt/Seshadri headphone system to improve usability, particularly in noisy environments. This feature would give users direct control over microphone input, a known and desirable function for headsets used for communication, which Haupt explicitly contemplated.
  • Expectation of Success: The integration of a physical switch for microphone control was a straightforward and well-understood modification in the art of headset design, presenting no significant technical hurdles.

Ground 3: Obviousness over Haupt, Seshadri, and Rosener - Claims 11, 12, 20, 21, 29, 30, 39, 40-42, and 53-56 are obvious over Haupt and Seshadri in view of Rosener.

• Prior Art Relied Upon: Haupt (WO 2006/042749), Seshadri (Application # 2006/0166716), and Rosener (Application # 2008/0076489).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground focused on the physical form factor of the headphones. While Haupt disclosed over-the-ear headphones, Rosener taught various alternative form factors for wireless headsets, including earbuds, canalphones, and designs with a connection wire carried by a headband. Petitioner argued that Rosener taught locating the wireless communication circuit in a single earphone and using a wire to transmit audio to the second earphone, meeting limitations of claims 11 and 20. Rosener also disclosed an "earloop" or "curved hanger bar" that fits around the user's ear, allegedly teaching the limitations of claim 29. The modification of Haupt's headphones into an earbud form factor, as taught by Rosener, allegedly met the limitations of claims 39 and 40.
  • Motivation to Combine: A POSITA would modify Haupt’s design using Rosener’s teachings to offer headphones in various form factors (e.g., smaller, more portable earbuds) to meet different consumer preferences for comfort, security, and portability. This was presented as a simple substitution of one known headphone style for another to achieve a predictable result.
  • Expectation of Success: Implementing known form factors like those in Rosener was within the ordinary skill in the art, as evidenced by the variety of wireless headphone designs available at the time.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations adding Rao (Patent 7,881,745) for teachings on firmware upgrades transmitted from a remote server to the headphones.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The petition was filed early in the parallel district court litigation, before any substantive orders or a Markman hearing. Petitioner contended that the court’s trial date was uncertain and that institution would likely trigger a stay, promoting efficiency. To further reduce overlap, Petitioner stipulated it would not pursue invalidity in the district court based on any ground that uses Haupt as a primary reference if the IPR is instituted. Petitioner also argued the grounds presented were strong and relied on prior art not considered during prosecution.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-3, 6, 8, 10-13, 16, 18, 20-22, 25, 27, 29-31, 34, 36, 38-43, 46, 48, and 51-56 of the ’025 patent as unpatentable.