Apple Inc v. Koss Corp

1. Case Identification

• Case #: IPR2021-00686
• Patent #: 10,491,982
• Filed: March 22, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Michael J. Koss, et al.
• Challenged Claims: 6-13

2. Patent Overview

• Title: SYSTEM WITH WIRELESS EARPHONES
• Brief Description: The ’982 patent relates to a system of wireless earphones for receiving streaming audio data over a network. The system comprises a pair of physically and electrically separate earphones, each containing its own wireless transceiver, processor circuit, acoustic transducer, microphone, and power source, designed to be worn simultaneously by a user.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 6, 8, 10, and 11 over Rosener, Hankey, Haupt, and Seshadri

• Prior Art Relied Upon: Rosener (Application # 2008/0076489), Hankey (Application # 2008/0166001), Haupt (WO 2006/042749), Seshadri (Application # 2006/0166716), and Seshadri-818 (Application # 2005/0037818). An alternative ground added Dyer (Patent 8,031,900) to provide further detail on "canalphone" structure.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Rosener, disclosed the foundational system: a pair of physically and electrically separate wireless earphones providing stereo sound from a mobile audio player via Bluetooth. However, Rosener lacked detail on component packaging. Hankey was alleged to supply this missing element by teaching techniques for arranging electronics within a small, compact earpiece form factor. To address the limitations of Rosener’s short-range communication, Petitioner asserted that Haupt taught the inclusion of a WLAN interface for higher-speed data transfer and internet access. Finally, Seshadri (which incorporates Seshadri-818 by reference) was introduced to teach managing multiple audio streams from different sources (e.g., WLAN and Bluetooth) and, critically, transitioning between them based on signal strength to maintain connection quality.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references to create a superior, more versatile product. A POSITA would have been motivated to implement Rosener’s conceptual design using Hankey’s established packaging techniques for miniaturization. To improve performance for data-intensive applications like streaming, a POSITA would incorporate Haupt’s WLAN technology. To enhance user experience, a POSITA would then integrate Seshadri’s teachings on intelligent source switching to allow the earphones to seamlessly transition between communication protocols.
  • Expectation of Success: A POSITA would have reasonably expected success in combining these elements, as each reference provided a known solution to a known problem in the field of wireless audio devices. The integration involved applying conventional engineering principles to combine existing, compatible technologies.

Ground 2: Obviousness of Claims 7, 9, 12, and 13 over Rosener, Hankey, Haupt, Seshadri, and Price

• Prior Art Relied Upon: The combination of Rosener, Hankey, Haupt, and Seshadri (and its Dyer variant) from Ground 1, in further view of Price (Application # 2006/0026304).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address claims requiring the earphones to receive firmware upgrades pushed from a remote network server. Petitioner argued that Price disclosed a software updating system for electronic devices, including music players. Price taught a coordinating computer (e.g., a user's PC) that obtains a software update from a remote server and "pushes" it to a target device. Petitioner mapped this system directly onto the claimed functionality, with Rosener’s external audio device functioning as Price's coordinating computer to deliver firmware upgrades to the earphones.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Price's teachings to add the commercially valuable and well-known capability of firmware upgradability to the combined earphone system from Ground 1. This would allow for improvements to the product’s reliability, functionality, and compatibility after sale, which Petitioner argued was a recognized benefit for complex electronic devices like the proposed earphones.
  • Expectation of Success: The petition asserted a high expectation of success, as adding firmware update capability was a common practice for microprocessor-controlled devices at the time. Price provided a clear template for implementing such a feature, and the transceivers in Rosener’s earphones were inherently capable of receiving the necessary non-audio data for an update.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), contending that the asserted prior art combinations and invalidity rationales were not previously considered by the USPTO. Specifically, the Hankey, Dyer, and Price references were entirely new, and while Haupt and Seshadri were cited during prosecution, they were never substantively examined. Petitioner further argued the examiner erred in the limited analysis of Rosener.
• Petitioner also argued that denial under the Fintiv factors of 35 U.S.C. §314(a) was unwarranted. This petition was presented as a follow-on to IPR2021-00381, challenging a distinct set of claims not addressed in the first filing. Petitioner asserted that the parallel district court litigation was in a very early stage with an uncertain trial date, and that it had stipulated not to pursue the same invalidity grounds in district court, thereby minimizing any overlap of issues and conserving judicial resources.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 6-13 of the ’982 patent as unpatentable under 35 U.S.C. §103.