Apple Inc v. Koss Corp

1. Case Identification

• Case #: IPR2022-00053
• Patent #: 10,206,025
• Filed: October 15, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Koss Corporation
• Challenged Claims: 1-56

2. Patent Overview

• Title: Wireless Earphone System and Method
• Brief Description: The ’025 patent discloses a wireless headphone system featuring a mobile digital audio player (DAP), a separate wireless headphone assembly, and a remote network-connected server. The system is designed to allow the headphone assembly to receive audio from the DAP via an ad hoc wireless link and to initiate requests to the remote server.

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, 54-56 are obvious over Rezvani-446, Rezvani-875, and 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 taught the core system of claim 1, including a "wireless portable media" (WPM) server and client devices like wireless headsets that communicate with the server to search for and stream music. The headset user could send commands to the server using buttons. While Rezvani-446 disclosed the system, it lacked detail on the headset's internal components. Rezvani-875, from the same inventors and filed the same day, filled this gap by disclosing a detailed wireless multi-media headset with all necessary components recited in the claims, such as a microprocessor, antenna, microphone, and rechargeable battery. To meet the "first and second earphones" limitation, Petitioner relied on Skulley, which taught that conventional headsets for music listening commonly used two earphones for stereo sound.
  • Motivation to Combine: A POSITA would combine Rezvani-446 and Rezvani-875 because they share inventors, priority dates, and subject matter, with Rezvani-875 providing the specific headset implementation for the system in Rezvani-446. A POSITA would be further motivated to incorporate Skulley's teaching of two earphones into the Rezvani headset to provide stereo sound, which was a well-known and desirable feature for music playback.
  • Expectation of Success: Success was expected because the combination involved applying predictable prior art elements (a detailed headset design and stereo earphones) according to their established functions to improve a known system.

Ground 2A: Obviousness over Schrager-Goldstein - Claims 1-3, 6, 8, 10-13, 16, 18, 38-43, 46, 48, 51-52, 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 asserted that Schrager disclosed a voice-controlled system comprising a wireless headset unit and a portable base unit (a mobile DAP) containing a music player and cellular telephone functionality. The headset contained all the core hardware of claim 1, including a speaker, processor, microphone, and rechargeable batteries. Schrager's system, however, lacked connectivity to a remote server for content acquisition. Goldstein taught this missing element, disclosing a headphone system with an embedded "Personal Audio Assistant" (PAA) that communicates with a remote server to download or stream music and receive firmware updates. The Goldstein headphone could initiate requests, such as purchasing music, via a one-click interface.
  • Motivation to Combine: A POSITA would combine these references to improve Schrager's system by integrating Goldstein's PAA software and remote server functionality. This would provide users of the Schrager headset with convenient access to a larger, updated library of music and allow for remote firmware updates, both of which were known benefits taught by Goldstein.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because modifying Schrager's hardware (which already had the necessary processors, memory, and wireless circuits) to run Goldstein's PAA software would have been a routine implementation of known software on a suitable platform to achieve the predictable result of network connectivity.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges that build upon the primary combinations. These grounds add further references to teach more specific claim limitations, such as using Harada for dynamically selecting an audio source based on signal strength, Hind for remote firmware updates, Davis for an "in-the-ear" headset design with a hanger bar, and Oh for a "true-wireless" stereo earbud design.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv was unwarranted. It contended that the parallel district court litigation was in its infancy and that the Board had already considered and rejected similar Fintiv arguments when instituting a related IPR filed by a third party. Petitioner further noted that it stipulated it would not pursue in the district court litigation any invalidity ground relying on Rezvani-875 or Schrager as a primary reference if the Board instituted this review, thereby preventing overlap of issues between the IPR and the court proceeding.

5. Relief Requested

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