PTAB

IPR2021-00626

Apple Inc v. Koss Corp

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1. Case Identification

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 earphones include a user control that, when activated, transmits a request to a remote server via the wireless network.

3. Grounds for Unpatentability

Ground 1: Obviousness over Haupt and Seshadri - Claims 1, 2, 5, and 9 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 disclosed the core system of a wireless headphone unit capable of connecting to remote servers over a WLAN. However, Haupt’s primary audio source was a server. Seshadri taught a modular wireless headset that could connect to multiple local digital audio sources (e.g., PDAs, MP3 players) via both WLAN and ad-hoc networks (e.g., Bluetooth), and could transition between them. The combination of Haupt and Seshadri allegedly rendered obvious a system where Haupt's WLAN headphones were modified to connect to local mobile audio players (as taught by Seshadri) in addition to remote servers. This combination taught a mobile digital audio player separate from a wireless headphone assembly, communicating via an ad-hoc link, as required by independent claim 1.
    • Motivation to Combine: A POSITA would combine Haupt and Seshadri to enhance the functionality of Haupt’s headphones, allowing them to connect to local devices when a WLAN access point is unavailable. This would improve usability by providing access to all of a user's audio devices and would allow the headphones to conserve battery power by using lower-power ad-hoc networks like Bluetooth for local connections.
    • Expectation of Success: Petitioner asserted success was expected because Haupt and Seshadri are analogous art, both relating to wireless headphones with similar components and functionalities (e.g., WLAN, Bluetooth, microphones). Combining their features was a predictable integration of known technologies.

Ground 2: Obviousness over Haupt, Seshadri, and Paulson - Claims 3, 4, and 6 are obvious over Haupt, Seshadri, and 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: This ground built upon the combination of Haupt and Seshadri by adding the teachings of Paulson. Paulson disclosed a voice communication device with a microphone and a switch providing push-to-talk functionality, allowing a user to physically mute and unmute the microphone. Petitioner argued it would have been obvious to add Paulson’s push-to-talk switch to the microphone of the Haupt/Seshadri headphone system. This modification met the limitations of dependent claim 3, which requires processing audible utterances picked up by the microphone in response to the user's activation of it.
    • Motivation to Combine: A POSITA would be motivated to incorporate Paulson's switch to give users better control over microphone input. This would be particularly useful for features like active noise compensation (disclosed in Haupt) or for use in noisy environments, allowing the user to reduce unwanted background noise transmitted to a distant party.

Ground 3: Obviousness over Haupt, Seshadri, and Rosener - Claims 11, 12, 15, 19-21, 24, 28-30, 33, 37, 40-42, 45, and 50 are obvious over Haupt, Seshadri, and 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 added Rosener to the primary combination to address claims directed to specific physical form factors of the earphones. Rosener disclosed various configurations for wireless headsets, including over-the-ear headphones with a headband, earbuds that fit in the concha, and canalphones. For example, Rosener taught that one earphone could contain the transceiver with a wire in the headband connecting to the second earphone, directly mapping to limitations in claims 11 and 20. It also disclosed earloops for securing earphones, mapping to limitations in claim 29.
    • Motivation to Combine: A POSITA would modify the Haupt/Seshadri system using Rosener’s teachings to offer the device in various form factors. This was argued to be a simple design choice to improve user comfort, portability, and stability, catering to different user preferences. Implementing the established wireless technology in known physical configurations would have been a predictable endeavor.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 1D) against claims 13, 14, 16, 17, 22-23, 25-26, 31-32, 34-35, 43-44, and 46-49 based on the combination of Haupt, Seshadri, Rosener, and Paulson. This ground combined the teachings of the prior grounds to address claims requiring both specific form factors and push-to-talk microphone functionality.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors was inappropriate. The petition was filed at an early stage of the parallel district court litigation, approximately four months after infringement contentions were served. Petitioner contended that the district court's trial date was uncertain and likely to slip past the statutory deadline for a Final Written Decision (FWD). To avoid overlap, Petitioner also stipulated that it would not pursue in the district court any invalidity ground raised or that could have been reasonably raised in the IPR.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and cancellation of claims 1-6, 9, 11-17, 19-26, 28-35, 37, and 40-50 of the ’025 patent as unpatentable.