PTAB

IPR2022-01503

Plantronics Inc v. Koss Corp

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1. Case Identification

2. Patent Overview

  • Title: System with Wireless Earphones
  • Brief Description: The ’498 patent describes a system of wireless earphones, where each earphone includes a system-on-chip (SOC). The SOC contains a wireless communication circuit, a processor, and a memory unit for storing firmware updates pushed from a remote server, and is configured to mute streamed audio to handle incoming wireless communications.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 7, 17, 19-22, and 24-26 are obvious over Rosener, Dua, Price, and Nakagawa.

  • Prior Art Relied Upon: Rosener (Application # 2008/0076489), Dua (Application # 2006/0258289), Price (Application # 2006/0026304), and Nakagawa (Application # 2003/0223604).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued this combination teaches all limitations of independent claim 1. Rosener taught physically separate wireless earphones worn simultaneously. Dua taught wireless headphones incorporating an SOC with a CPU, memory (EEPROM), and wireless communication circuit. Price taught a system for pushing firmware updates wirelessly to electronic devices like those in Dua. Nakagawa taught a wireless headset system that automatically mutes audio from one source (e.g., a music player) to output audio from a second, higher-priority source (e.g., an incoming phone call).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Rosener and Dua to integrate Dua’s compact, low-power SOC into Rosener’s in-ear form factor to improve miniaturization and performance. A POSITA would add Price’s wireless firmware update system to the Rosener-Dua combination to provide a convenient, automatic method for updating the earphones without wires, overcoming the known problems of laborious manual updates. Finally, a POSITA would incorporate Nakagawa’s audio-switching functionality to allow a user to seamlessly answer phone calls while listening to music, enhancing user convenience.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved integrating known components (SOCs, wireless update protocols, audio-switching logic) that used compatible technologies like Bluetooth and standard memory types (EEPROM) to improve the functionality of a known device type (wireless earphones).

Ground 2: Claims 5, 6, 8-14, and 18 are obvious over Rosener, Dua, Price, and Nakagawa in view of Huddart.

  • Prior Art Relied Upon: Rosener, Dua, Price, Nakagawa, and Huddart (Patent 7,627,289).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Huddart to teach limitations related to power and charging. Huddart disclosed a wireless headset system with rechargeable batteries and a charger/carrier case (docking station) that could charge the earphones, including via magnetic induction (wireless charging). This combination allegedly rendered claims reciting a rechargeable power source (claim 5), a wirelessly chargeable circuit component (claims 5, 18), and a docking station (claim 8) obvious.
    • Motivation to Combine: A POSITA would be motivated to add Huddart’s charging solution to the base combination to provide a convenient way to store and recharge the wireless earphones. Huddart’s teachings of inductive charging were particularly advantageous as they would simplify the earphone design by removing the need for physical charging contacts, making the small devices easier to manufacture and operate.
    • Expectation of Success: Success was expected as incorporating rechargeable batteries and a charging case was a well-known and necessary feature for portable electronic devices like wireless earphones.

Ground 3: Claim 15 is obvious over Rosener, Dua, Price, Nakagawa, and Huddart in view of McIntosh.

  • Prior Art Relied Upon: Rosener, Dua, Price, Nakagawa, Huddart, and McIntosh (Patent 6,278,786).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground added McIntosh to the combination from Ground 2 to address claim 15, which required the processor circuits be configured to perform noise cancellation. McIntosh disclosed an active noise cancellation headset system that used a Digital Signal Processor (DSP). Dua’s SOC already included a DSP, making it a suitable platform for implementing such features.
    • Motivation to Combine: Petitioner argued a POSITA would be motivated to add McIntosh’s noise cancellation feature to improve the audio listening experience, particularly in loud environments. McIntosh taught that employing a DSP made it easy to add other signal processing features, and Dua provided the necessary DSP hardware, creating a clear path for integration.
    • Expectation of Success: A POSITA would have an expectation of success because adding noise-cancellation algorithms to a device with a DSP was a known technique for improving audio quality in headphones.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 16 and 23 based on the primary combination in view of Feder (Application # 2004/0142693), which taught automatically transitioning between wireless communication links based on signal strength.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) was inappropriate because the petition was the first post-issuance challenge to the ’498 patent and the parallel district court litigation was stayed, meaning no Fintiv factors weighed in favor of denial.
  • Petitioner argued that denial under §325(d) was unwarranted because the core prior art references central to its grounds (Dua, Price, Nakagawa, McIntosh, and Feder) were not before the Examiner during prosecution. These references allegedly taught the very limitations added to the claims to overcome the Examiner’s rejections.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-26 of the ’498 patent as unpatentable.