Apple Inc v. Koss Corp

1. Case Identification

• Case #: IPR2021-00693
• Patent #: 10,469,934
• Filed: March 23, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Koss Corporation
• Challenged Claims: 1-6, 8, 10-20, 22-29, 31-36, 38-42, 44, 58-62

2. Patent Overview

• Title: SYSTEM WITH WIRELESS EARPHONES
• Brief Description: The ’934 patent discloses a system of wireless earphones that receive audio data over a network. The earphones may include a user control that, when activated, causes the earphone to transmit a request for digital audio content to a remote server.

3. Grounds for Unpatentability

Ground 1: Obviousness over Haupt and Seshadri - Claims 58 and 59 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 taught the core elements of the challenged claims, including a wireless headphone unit that connects to remote servers via a WLAN to receive audio signals. Haupt’s headphones include transducers, a processor (central control unit), a microphone, a rechargeable battery, and a wireless communication circuit. However, Haupt’s primary audio source is a remote server. Seshadri taught a modular wireless headset that connects to multiple local audio sources (e.g., cellphones, PDAs) via both WLAN and ad-hoc networks like Bluetooth. Petitioner asserted that combining Haupt with Seshadri’s teachings would result in a headphone assembly capable of communicating with both remote servers (per Haupt) and local digital audio players via ad-hoc links (per Seshadri). The combination also taught transitioning between audio sources based on signal strength, as disclosed in a reference incorporated by Seshadri (Seshadri-818).
  • Motivation to Combine: A POSITA would combine Haupt and Seshadri to enhance the functionality of Haupt’s headphones. The combination would allow the headphones to connect to a user’s local devices, providing greater flexibility and usability, especially when a WLAN access point is unavailable. Seshadri explicitly recognized the benefits of dual communication pathways for switching based on audio quality and signal strength, which would have motivated a POSITA to incorporate this capability into Haupt's system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because both references related to the analogous art of wireless headsets and described using common, well-understood technologies like WLAN and Bluetooth for audio transmission. Integrating Seshadri's local connectivity features into Haupt's server-connected headphones was presented as a predictable combination of known elements.

Ground 2: Obviousness over Haupt, Seshadri, and Rao - Claims 1, 2, 8, 32, and 62 are obvious over Haupt and Seshadri in view of Rao.

• Prior Art Relied Upon: Haupt (WO 2006/042749), Seshadri (Application # 2006/0166716), and Rao (Patent 7,881,745).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Haupt and Seshadri. Petitioner contended that while Haupt taught transferring necessary software (e.g., for decompressing audio) from a server to the headphones, it did not explicitly state this software was firmware. Rao taught that electronic devices like MP3 players and PDAs often contain firmware that can be updated by accessing remote servers. Rao specifically disclosed retrieving firmware updates to support new media formats or add new services. Petitioner argued that adding Rao’s teachings to the Haupt/Seshadri combination would render obvious the claimed limitation of a memory for storing firmware and receiving firmware upgrades from the remote, network-connected server.
  • Motivation to Combine: A POSITA would be motivated to incorporate Rao's firmware update capability into the Haupt/Seshadri device to improve its longevity and functionality. Providing firmware updates would allow the headphones to support new audio codecs, fix bugs, and enhance performance over time, which was a well-known and desirable feature for consumer electronics. It would have been a logical extension of Haupt's teaching of downloading necessary software.
  • Expectation of Success: The combination involved applying a conventional feature (remote firmware updates) to a known device type (wireless headphones). Since Rao described this exact functionality for similar portable electronic devices, a POSITA would have reasonably expected to successfully implement it in the combined Haupt/Seshadri system.

Ground 3: Obviousness over Haupt, Seshadri, and Paulson - Claims 60 and 61 are obvious over Haupt and Seshadri in view of 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 also built on the base Haupt/Seshadri combination, adding the teachings of Paulson to address limitations related to microphone activation. Paulson disclosed a voice communication headset with a physical switch providing "push-to-talk" functionality, allowing a user to manually mute and unmute the microphone. Petitioner argued that modifying the Haupt/Seshadri device to include Paulson’s push-to-talk switch would render obvious the claimed feature of a processor processing audible utterances in response to user activation of the microphone.
  • Motivation to Combine: A POSITA would have been motivated to add Paulson’s microphone mute switch to provide a useful and common feature, particularly for a device that Haupt described as usable in conference systems. Paulson noted its switch was important for users in noisy environments to reduce noise heard by a distant party. This provided a clear reason to add a convenient, physical microphone control to the multi-functional headphones of Haupt and Seshadri.
  • Expectation of Success: Integrating a physical switch for microphone control into a headset that already includes a microphone and processor is a straightforward modification. As both Haupt and Paulson operate in the analogous art of headsets, a POSITA would have had a high expectation of success in implementing this combination.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Rosener (Application # 2008/0076489) for teachings on physical form factors (e.g., earbuds, headbands, earloops) and further combinations of all prior art references to address remaining dependent claims.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. The petition asserted that it addressed "signal strength claims" not covered in a prior-filed IPR (IPR2021-00592), leveraging an additional reference (Seshadri-818) to do so. Petitioner contended that the parallel district court litigation was in an early stage, the trial date was uncertain and likely to slip past the Final Written Decision (FWD) date, and that Petitioner had stipulated it would not pursue invalidity in district court based on Haupt as a primary reference, thereby avoiding significant overlap.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 8, 10-20, 22-29, 31-36, 38-42, 44, and 58-62 of Patent 10,469,934 as unpatentable.