Bose Corp v. Koss Corp

1. Case Identification

• Case #: IPR2021-00680
• Patent #: 10,469,934
• Filed: 03-17-2021
• Petitioner(s): Bose Corporation
• Patent Owner(s): Koss Corporation
• Challenged Claims: 1-22, 32-41, 47, 49-62

2. Patent Overview

• Title: Wireless Headphones
• Brief Description: The ’934 patent describes a wireless headphone assembly capable of communicating with mobile digital audio players and remote servers. The purported novelty, added during prosecution, involves either receiving and storing firmware upgrades from a remote server or automatically transitioning between different wireless audio sources based on signal strength.

3. Grounds for Unpatentability

Ground 1A: Claims 1-3, 5, 7, 9-11, 32-37, 39, 47, 49, 51-57 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 argued that Schrager taught a complete wireless headset system with all necessary hardware components, including earphones with speakers, a processor, a wireless transceiver, a microphone, and a rechargeable battery. However, Schrager’s system lacked robust network connectivity. Petitioner asserted that Goldstein supplied the missing elements by teaching a "Personal Audio Assistant" (PAA) software for headphones that enables communication with a remote server to stream or download audio content and, critically, to receive and store firmware updates in the headphone's memory.
  • Motivation to Combine: A POSITA would combine Goldstein’s PAA software with Schrager’s hardware for two primary reasons. First, it would improve Schrager’s headset by providing a convenient way to access a larger, updated library of music from a remote server. Second, it would add the well-known benefit of receiving wireless firmware updates to provide performance enhancements, repair coding errors, and add new features, all with minimal user involvement.
  • Expectation of Success: Petitioner contended that a POSITA would have a high expectation of success because both systems utilized conventional wireless protocols like Bluetooth and Wi-Fi. Goldstein explicitly taught that its PAA software could be incorporated into "any portable technology," making its integration into the Schrager hardware a routine task.

Ground 1B: Claims 4, 6, 8, 12-13, 38, 40-41, 58-62 are obvious over Schrager-Goldstein in view of Harada.

• Prior Art Relied Upon: Schrager (Patent 7,072,686), Goldstein (Application # 2008/0031475), and Harada (Application # 2006/0229014).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets claims requiring the headphone to transition between audio sources based on signal strength, a feature central to independent claim 58. Petitioner argued that the Schrager-Goldstein combination already provided a headset with multiple potential audio sources (e.g., a local mobile player, a remote server). Harada taught a technique for any device equipped with short-range wireless communication to dynamically select one or more available devices based on selection factors, including the "received signal level."
  • Motivation to Combine: A POSITA would incorporate Harada's technique to improve the connection reliability and user convenience of the Schrager-Goldstein headphone. Harada provided a known solution for automatically switching to an alternative audio source when the connection to the primary source became poor or was lost (e.g., moving out of range), thereby preventing interruption of the audio playback.
  • Expectation of Success: Success was expected because Harada’s technique was designed to be broadly applicable to any device using short-range wireless functions, which the proposed Schrager-Goldstein combination already possessed.

Ground 2A: Claims 1-3, 5, 7, 9-11, 14-16, 19, 21, 47, 49-53 are obvious over Rezvani-875, Rezvani-446, Skulley, and Hind.

• Prior Art Relied Upon: Rezvani-875 (Application # 2007/0165875), Rezvani-446 (Application # 2007/0136446), Skulley (Patent 6,856,690), and Hind (Patent 7,069,452).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative path to obviousness. Petitioner asserted that the co-pending, commonly-invented Rezvani-875 and Rezvani-446 applications together disclosed a wireless headset system with all core components (processor, memory, battery, wireless interface) designed to communicate with mobile devices and a "wireless portable media" (WPM) server. Skulley was cited to show that implementing this system with a conventional two-earphone design for stereo sound was a common and predictable choice. Hind was cited for its teaching that receiving remote firmware updates was a conventional feature for electronic devices, including "wireless stereo headphones."
  • Motivation to Combine: A POSITA would combine the related Rezvani applications as they described complementary parts of a single wireless audio system. Implementing this system with two earphones as taught by Skulley was a simple, known technique to achieve desirable stereo sound. Adding the remote firmware update capability taught by Hind was a predictable improvement to enhance performance and fix bugs, using the already-disclosed network connection to the WPM server.
  • Expectation of Success: Petitioner argued this combination would have been routine. The Rezvani references were intended to work together. Modifying the headset for stereo sound and adding firmware updates were described as predictable applications of known techniques to a known device, ready for improvement.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations adding Harada to the Rezvani-based system and adding Oh (a reference teaching true-wireless stereo earbuds) to create a true-wireless design.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors was inappropriate. It contended that the parallel district court litigations were in their infancy, with speculative trial dates due to a congested court docket and pending transfer motions. Petitioner asserted it filed its petition diligently after infringement contentions significantly expanded the number of asserted claims.
• Petitioner also argued against denial under §325(d), asserting that the petition presented new prior art and arguments not before the Examiner. Specifically, the Examiner allowed the claims without considering art like Hind and Harada, which Petitioner argued demonstrated that the key limitations added during prosecution (firmware updates and signal-strength switching) were conventional and thus obvious.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-22, 32-41, 47, and 49-62 as unpatentable.