Bose Corp v. Koss Corp

1. Case Identification

• Case #: IPR2021-00612
• Patent #: 10,206,025
• Filed: 03-03-2021
• Petitioner(s): Bose Corporation
• Patent Owner(s): Koss Corporation
• Challenged Claims: 1-56

2. Patent Overview

• Title: Wireless Headphone System
• Brief Description: The ’025 patent describes a wireless audio system where a headphone assembly communicates with a mobile digital audio player and a remote, network-connected server. The core challenged functionality involves the headphone's processor initiating the transmission of a request to the remote server upon activation of a user control on the headphone.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Rezvani-Rezvani-Skulley - Claims 1-3, 6, 8, 11-13, 16, 18, 20-22, 25, 27, 39, 52, and 54-56 are obvious over Rezvani-446 and Rezvani-875 in view of Skulley.

• Prior Art Relied Upon: Rezvani-446 (Application # 2007/0136446), Rezvani-875 (Application # 2007/0165875), and Skulley (Patent 6,856,690).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rezvani-446 disclosed the core system of a wireless headset communicating with a remote "wireless portable media" (WPM) server. The headset was shown to send music search requests via voice or button presses to the server, which then streamed the selected music back. To supply the specific hardware details of the headset not explicit in Rezvani-446, Petitioner pointed to Rezvani-875, filed by the same inventors on the same day. Rezvani-875 disclosed a "multi-media headset" with all the required components of claim 1, including an antenna, microprocessor, microphone, and rechargeable battery. To address the "first and second earphones" limitation, Petitioner cited Skulley, which taught that conventional headsets for music listening commonly used one or two earphones for monaural or stereo sound.
  • Motivation to Combine: A POSITA would combine Rezvani-446 and Rezvani-875 because they shared inventors, filing dates, and subject matter, with Rezvani-875's headset being designed for the exact purpose of connecting to a music server like the one in Rezvani-446. A POSITA would have been further motivated to incorporate two earphones as taught by Skulley into the Rezvani-875 headset to provide high-fidelity stereo sound, a well-known and desirable feature for music playback.
  • Expectation of Success: Success would have been reasonably expected as the combination involved the predictable use of prior art elements according to their established functions. Implementing the detailed headset of Rezvani-875 within the server-based system of Rezvani-446 was an intended use, and modifying it for stereo sound was a routine design choice.

Ground 2A: Obviousness over Schrager-Goldstein - Claims 1-3, 6, 8, 10-13, 16, 18, 38-43, 46, 48, 51-52, and 54-56 are obvious over Schrager in view of Goldstein.

• Prior Art Relied Upon: Schrager (Patent 7,072,686) and Goldstein (Application # 2008/0031475).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Schrager disclosed a base system of a wireless headset communicating with a base unit (a mobile DAP). The headset included a speaker, processor, wireless transceiver, and microphone. Schrager's base unit could be an MP3 player that stored and transmitted audio to the headset. To add the remote server interaction, Petitioner cited Goldstein, which disclosed a headphone containing a "Personal Audio Assistant" (PAA). Goldstein's headphone could communicate with a remote server to download music, stream content, and receive firmware updates. Crucially, Goldstein taught that a user could initiate a request (e.g., a music purchase) to the remote server using a control interface on the headphone itself.
  • Motivation to Combine: A POSITA would have been motivated to integrate Goldstein's PAA software and server functionality into Schrager's hardware system. This combination would improve Schrager's device by giving it access to a larger, server-based music library and enabling convenient over-the-air firmware updates, both known benefits. This was presented as combining prior art elements to achieve a predictable result.
  • Expectation of Success: The combination was argued to have a high expectation of success. Schrager's headset and base unit already contained the necessary processors, memory, and wireless circuits to run software like Goldstein's PAA. Goldstein explicitly stated its software could be incorporated into "any portable technology," making the integration into Schrager's system a routine task for a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges by augmenting the Rezvani-Rezvani-Skulley and Schrager-Goldstein combinations with further references. These included Harada for automatic source switching based on signal strength, Hind for remote firmware updates, Davis for specific in-ear hanger-bar designs, and Oh for true-wireless earbud designs with docking-station charging.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court litigations were in their infancy, with no significant investment in discovery on invalidity issues. Petitioner contended that the scheduled trial dates were speculative due to a congested court docket and pending motions to transfer, making it likely that a Final Written Decision (FWD) from the PTAB would issue before trial. The petition was also filed promptly after the patent owner expanded its infringement contentions from one claim to forty-six. Petitioner further argued that the petition presents new prior art and arguments not considered during prosecution, as key references like Rezvani-446 and Goldstein were never applied by the Examiner, which weighs heavily against denial under §325(d).

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-56 of the ’025 patent as unpatentable.