Apple Inc v. Koss Corp

1. Case Identification

• Case #: IPR2021-00600
• Patent #: 10,298,451
• Filed: March 7, 2021
• 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 with credentials for an infrastructure wireless network (e.g., Wi-Fi). The system involves credentials being input on a remote server, which are then passed to the target wireless device through an intermediary mobile computer device.

3. Grounds for Unpatentability

Ground 1A: Claims 1, 6, 12-13, and 16-20 are obvious over Scherzer in view of Subramaniam.

• Prior Art Relied Upon: Scherzer (Application # 2007/0033197) and Subramaniam (Application # 2011/0289229).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Scherzer and Subramaniam discloses all limitations of the challenged independent claims. Scherzer taught a system where a community of registered users could share credential data for their respective wireless access points via a central application server, enabling users to access the internet from many locations. Subramaniam taught a technique to simplify network setup by transferring wireless configuration settings from an already-configured computing device to a new, non-member device over a direct, ad hoc wireless link, thereby avoiding tedious manual entry. The combination allegedly discloses a system where a host server (Scherzer's server) stores credential data, which is transmitted from a mobile computer device (Subramaniam's configured device) to an electronic device (Subramaniam's new device) via an ad hoc link.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references to solve a problem in Scherzer. To join Scherzer's network, a new device without internet access would need to receive the necessary software client via a cumbersome method, such as mail. A POSITA would look to known network configuration techniques and find Subramaniam’s method of using an ad hoc link to transfer settings from a connected device to be an elegant solution. This combination would simplify the onboarding process, reduce user burden, and avoid expensive cellular data usage.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the references involved applying a known, simplified network configuration method (Subramaniam) to a known credential-sharing system (Scherzer). The integration was predictable and addressed a known usability problem.

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

• Prior Art Relied Upon: Scherzer (Application # 2007/0033197), Subramaniam (Application # 2011/0289229), and Baxter (Application # 2007/0245028).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Scherzer/Subramaniam combination by adding the teachings of Baxter. Baxter disclosed a client-server system for streaming audio and video content to client devices, such as smartphones, which were known to be used as entertainment devices. Petitioner argued that incorporating Baxter's teachings would render obvious the claim limitations related to acoustic speaker devices, earphones, and video players for streaming content from a remote server.
  • Motivation to Combine: A POSITA implementing the base Scherzer/Subramaniam system on devices like smartphones would have considered adding media playback functionality. Since devices of the type disclosed were commonly used for entertainment, incorporating a well-known media streaming architecture like that in Baxter would have been a predictable and obvious design choice to enhance the device's utility.

Ground 1E: Claims 11 and 15 are obvious over Scherzer, Subramaniam, and Montemurro.

• Prior Art Relied Upon: Scherzer (Application # 2007/0033197), Subramaniam (Application # 2011/0289229), and Montemurro (Patent 9,949,305).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground added Montemurro to the base combination to address claims specifying the use of a smartphone and a particular ad hoc network type. Montemurro taught that wireless terminals, such as smartphones, can establish direct peer-to-peer (P2P) connections using technologies like Bluetooth without relying on an intermediary WLAN infrastructure.
  • Motivation to Combine: Petitioner asserted that a POSITA would find it obvious to implement the ad hoc wireless link from Subramaniam using Bluetooth, as taught by Montemurro. Bluetooth was a well-known and interchangeable technology for the kind of direct P2P communication required, making its selection a simple design choice for implementing the ad hoc connection on a smartphone.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on the Scherzer/Subramaniam combination in view of other tertiary references. These grounds relied on similar design modification theories to add known features, such as a camera and lighting system (Drader), integration of a medical device (Ramey), and the inclusion of encryption-type data in the transferred credentials (Gupta).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) (considering Fintiv factors) and General Plastic would be inappropriate. The petition contended that this follow-on filing was necessary only because the Patent Owner, late in a parallel district court proceeding, asserted a new, much earlier invention date that antedated prior art used in Petitioner's first inter partes review (IPR) petition. Petitioner also asserted that the parallel litigation was in its early stages, the court’s trial date was uncertain and likely to slip past the statutory deadline for a Final Written Decision (FWD), and any overlap in issues was minimal because Petitioner had stipulated not to pursue invalidity in court based on the primary reference (Scherzer) if the IPR was instituted.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-21 of Patent 10,298,451 as unpatentable.