Apple Inc v. Koss Corp

1. Case Identification

• Case #: IPR2022-00188
• Patent #: 10,469,934
• Filed: November 15, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Koss Corporation
• Challenged Claims: 1-22, 32-41, 47, 49-62

2. Patent Overview

• Title: Headphone Assembly with Wireless Connectivity
• Brief Description: The ’934 patent discloses a wireless headphone assembly capable of communicating with a mobile digital audio player (DAP) via ad hoc wireless links. The assembly is also configured to communicate with a remote, network-connected server to receive firmware upgrades and to initiate requests from the user to the server.

3. Grounds for Unpatentability

Ground 1: Obviousness over Schrager and Goldstein - 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 asserted that Schrager disclosed a voice-controlled multimedia system with a wireless headset and a base unit that communicate via a wireless link like Bluetooth. The headset included core components recited in claim 1, such as earphones with speakers, a processor, microphone, antenna, and rechargeable batteries. Petitioner argued Goldstein disclosed a “Personal Audio Assistant” (PAA) built into a headphone that connects to a remote server over a network (e.g., Wi-Fi, cellular) to download music and receive firmware updates, which are stored in the headphone’s memory. The combination of Schrager’s hardware with Goldstein’s server communication and firmware update functionality allegedly rendered the key limitations of independent claim 1 obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Goldstein’s PAA software and server functionality with Schrager’s headset to improve it. The primary motivations were to provide users with access to a larger, server-based music library and to enable convenient, over-the-air firmware updates to add features or fix bugs. This combination represented a predictable improvement to Schrager's existing wireless audio system.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involved integrating known software (Goldstein's PAA) onto hardware (Schrager's headset) that already possessed the necessary components, such as a processor, memory, and wireless communication circuits. The integration would use well-understood wireless protocols like Bluetooth and Wi-Fi, making it a routine design choice.

Ground 2: Obviousness over Rezvani, Skulley, and Hind - Claims 1-3, 5, 7, 9-11, 14-16, 19, 21, 47, 49-53 are obvious over Rezvani-875, Rezvani-446, and Skulley in view of 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: Petitioner contended that Rezvani-875 disclosed a multi-media headset with subsystems for wireless communication (Wi-Fi/Bluetooth), processing, memory, and audio I/O. Rezvani-446, from the same inventors, disclosed a corresponding wireless media server system allowing clients like headsets to stream and download music. This combination provided the core network-connected headphone system. Skulley was cited for teaching conventional two-earphone headset designs (e.g., earbuds, on-ear, over-ear). Hind was cited for teaching that electronic devices, including wireless stereo headphones, could receive firmware updates from a remote server over a network connection.
  • Motivation to Combine: Petitioner argued that a POSITA would be motivated to use the Rezvani-875 headset within the complementary Rezvani-446 server system, as this was a natural and intended pairing. A POSITA would have implemented this system with two earphones as taught by Skulley to provide stereo sound, a common and desirable feature for high-fidelity audio. Finally, a POSITA would have incorporated the remote firmware update capability taught by Hind to improve the device by adding performance enhancements and fixing software errors, which were known benefits of updatable firmware.
  • Expectation of Success: The combination was presented as a predictable assembly of prior art elements according to their established functions. Combining the two Rezvani applications was straightforward given their common inventorship and complementary subject matter. Modifying the headset to include two earphones for stereo and adding the capability for remote firmware updates were considered routine and conventional improvements for such consumer electronic devices at the time.

• Additional Grounds: Petitioner asserted additional obviousness challenges, primarily by adding Harada (Application # 2006/0229014) to the primary combinations to teach transitioning between audio sources based on signal strength (addressing claim 58 and others), and by adding Oh (WO 2006/098584) to teach a true-wireless earbud design with a docking station for charging (addressing claims 32-37 and others).

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) based on Fintiv factors. The petition, filed as a joinder motion to an earlier-filed IPR by another party, noted that the Board had already instituted review in that proceeding after finding the Fintiv factors did not support denial. Petitioner asserted that because the parallel district court litigation schedules remained unchanged, the Board’s prior analysis holds, and denial would be inappropriate. Petitioner further stipulated that it would not pursue invalidity in the district court based on the primary references used in this petition, thereby ensuring no overlap of issues.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-22, 32-41, 47, and 49-62 of the ’934 patent as unpatentable under 35 U.S.C. §103.