Apple Inc v. Koss Corp

1. Case Identification

• Case #: IPR2021-00592
• Patent #: 10,469,934
• Filed: March 2, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Michael J. Koss, et al.
• Challenged Claims: 1-3, 5, 7, 9-11, 14-16, 19, 21, 23-25, 28, 30, 32-37, 39, 42-43, 45-48, 51-57

2. Patent Overview

• Title: System with Wireless Earphones
• Brief Description: The ’934 patent discloses a wireless earphone system that receives audio data over a network. The claimed headphone assembly includes components such as first and second earphones with acoustic transducers, an antenna, a wireless communication circuit, a processor, memory for storing firmware, and a rechargeable battery.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 9, 32, 47, 52-54, 56, and 57 are obvious over Haupt, Seshadri, and Rao.

• Prior Art Relied Upon: Haupt (WO 2006/042749), Seshadri (Application # 2006/0166716), and Rao (Patent 7,881,745).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Haupt discloses the core of the claimed invention: a wireless headphone unit with a transmitter/receiver capable of both WLAN and Bluetooth communication, a processor (central control unit), and memory (buffer). Seshadri was argued to teach a modular wireless headset that improves on basic designs by allowing a user to connect to and transition between multiple audio sources, including local devices via ad-hoc networks (e.g., Bluetooth) and remote servers via WLAN. Rao was asserted to teach that electronic devices commonly receive firmware and software updates from a server to add features or support new media formats. Petitioner contended the combination discloses all limitations of independent claim 1, including the ability to receive audio from a mobile player via an ad-hoc link (Haupt/Seshadri) and receive firmware upgrades from a remote server (Haupt/Rao).
  • Motivation to Combine: A POSITA would combine Haupt and Seshadri to create a more versatile and user-friendly headphone that could seamlessly access audio from both local devices and remote network servers, a predictable improvement. A POSITA would combine Rao’s teaching of over-the-air firmware updates with the Haupt/Seshadri system because Haupt explicitly suggests its headphones could receive the “newest software version,” and Rao provides a known method (server-based updates) to achieve this.
  • Expectation of Success: Petitioner asserted that combining known wireless protocols (WLAN, Bluetooth) and implementing firmware updates were common and well-understood practices in the art, providing a POSITA with a reasonable expectation of success.

Ground 2: Claims 3, 5, and 7 are obvious over Haupt, Seshadri, Rao, and Paulson.

• Prior Art Relied Upon: Haupt (WO 2006/042749), Seshadri (Application # 2006/0166716), Rao (Patent 7,881,745), and Paulson (Patent 7,551,940).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination of Haupt, Seshadri, and Rao by adding the teachings of Paulson. Petitioner argued that Paulson discloses a headset with a microphone and a physical switch that provides “push-to-talk” functionality, allowing a user to mute and unmute the microphone. This teaching was mapped to dependent claims requiring the processor to process audible utterances in response to user activation of the microphone.
  • Motivation to Combine: A POSITA would be motivated to incorporate Paulson's push-to-talk switch into the headset of Ground 1 to provide users with direct, tactile control over the microphone. This would be a useful and predictable improvement for managing voice communications, particularly in noisy environments or for privacy.
  • Expectation of Success: Integrating a physical switch into headset circuitry was argued to be a simple, routine modification for a POSITA, with a high expectation of success.

Ground 3: Claims 10, 14, 15, 23, 24, 33-36, 42, 43, 46, 48-51, and 55 are obvious over Haupt, Seshadri, Rao, and Rosener.

• Prior Art Relied Upon: Haupt (WO 2006/042749), Seshadri (Application # 2006/0166716), Rao (Patent 7,881,745), and Rosener (Application # 2008/0076489).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the base combination by adding the teachings of Rosener for various physical form factors. Petitioner asserted that Rosener discloses multiple wireless headset configurations, including earbuds, canalphones, on-ear, and over-the-ear designs. Rosener also teaches specific physical structures, such as a headband that carries a connection wire between two earphones and earloops for securing earbuds. These teachings were mapped to dependent claims reciting specific form factors like earbuds, headbands, and on-ear/over-ear speaker elements.
  • Motivation to Combine: A POSITA would combine Rosener’s teachings with the Haupt system to offer various form factors that cater to different user preferences for comfort, portability, and style. This was presented as a simple substitution of one known headphone style for another to achieve the predictable result of a commercially desirable product line.
  • Expectation of Success: Adapting the known electronic components of a wireless headset to different physical housings was a routine design choice within the skill of a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 11, 16, 19, 21, 25, 28, 30, 37, 39, and 45 based on the combination of Haupt, Seshadri, Rao, Rosener, and Paulson, relying on similar design modification theories.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) based on the Fintiv factors. Petitioner contended that the parallel litigation in the Western District of Texas was at an early stage, with an uncertain trial schedule that was not sufficiently early to weigh in favor of denial. Furthermore, Petitioner argued that the grounds presented in the IPR are strong and that it had stipulated it would not pursue invalidity in the district court based on any ground that uses Haupt as a primary reference, thereby avoiding significant overlap between the proceedings.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5, 7, 9-11, 14-16, 19, 21, 23-25, 28, 30, 32-37, 39, 42-43, 45-48, and 51-57 of the ’934 patent as unpatentable.