UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Samsung Electronics America, Inc.,
`Petitioner
`v.
`Snik LLC,
`Patent Owner
`
`Case IPR2020-01429
`U.S. Patent No. 9,769,556
`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,769,556
`
`

`

`IPR2020-01429
`U.S. Patent No. 9,769,556
`
`IV.
`V.
`
`I.
`II.
`III.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(A)) ................................. 1
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED .............................................................................................. 1
`A.
`Claims for Which Review is Requested ................................................ 1
`B.
`Statutory Grounds of Challenge ............................................................ 1
`LEVEL OF ORDINARY SKILL IN THE ART .............................................. 3
`OVERVIEW OF THE ’556 PATENT AND THE PRIOR ART ..................... 3
`A.
`The ’556 Patent ..................................................................................... 3
`B.
`Kari ........................................................................................................ 5
`VI. CLAIM CONSTRUCTION ............................................................................. 6
`VII. DETAILED EXPLANATION OF GROUNDS .............................................. 8
`A.
`Ground 1: Kari, Janik, and Boersma Render Obvious Claims 1, 3, and
`45 ........................................................................................................... 8
`1.
`Claim 1 ........................................................................................ 8
`2.
`Claim 3 ......................................................................................30
`3.
`Claim 45 ....................................................................................33
`VIII. THE DISCRETIONARY FACTORS FAVOR INSTITUTING TRIAL .....34
`A.
`35 U.S.C. §314(a) ................................................................................34
`B.
`35 U.S.C. §325(d)................................................................................38
`IX. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 .................................39
`A.
`Real Party-in-Interest ..........................................................................39
`
`i
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`B.
`C.
`D.
`
`Related Matters ....................................................................................39
`Lead and Backup Counsel ...................................................................40
`Service Information .............................................................................41
`
`ii
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`IPR2020-01429
`U.S. Patent No. 9,769,556
`
`LIST OF EXHIBITS
`
`Description
`
`U.S. Patent No. 9,769,556
`[Reserved]
`Curriculum Vitae of Vijay Madisetti, Ph.D.
`Prosecution History of the ’556 Patent
`[Reserved]
`[Reserved]
`U.S. Patent No. 7,903,826 B2 to Boersma
`U.S. Patent Application Publication No. 2008/0130910 A1 to Jobling
`et al.
`[Reserved]
`International Patent Application Publication No. WO 2011/121169 A1
`to Kari
`[Reserved]
`[Reserved]
`U.S. Patent Application Publication No. 2007/0093279 A1 to Janik
`[Reserved]
`[Reserved]
`[Reserved]
`[Reserved]
`[Reserved]
`Declaration of Vijay Madisetti, Ph.D.
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`
`iii
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`IPR2020-01429
`U.S. Patent No. 9,769,556
`
`Exhibit
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`Description
`Snik LLC v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-cv-00458
`(E.D. Tex.), Samsung’s P.R. 4-1 Disclosures (June 30, 2020)
`Snik LLC v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-cv-00458
`(E.D. Tex.), Snik LLC’s P.R. 4-1 Disclosures (June 30, 2020)
`Snik LLC v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-cv-00458
`(E.D. Tex.), Docket Control Order (Apr. 8, 2020) (Dkt. 22)
`Snik LLC v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-cv-00458
`(E.D. Tex.), Order Granting Joint Motion for Entry of Agreed
`[Proposed] Order Focusing Patent Claims and Prior Art to Reduce
`Costs (Apr. 14, 2020) (Dkt. 32)
`Snik LLC v. Samsung Elecs. Co., Ltd., et al., Case No. 6:19-cv-00458
`(E.D. Tex.), Samsung’s P.R. 3-3 Disclosures (May 18, 2020)
`(excluding exhibits attached thereto)
`Letter from Jin-Suk Park to Kyle Harris, dated August 10, 2020
`Jennifer Elias, U.S. Reports More Than 70,000 New Coronavirus
`Infections for Second Day in a Row, CNBC (Jul. 18, 2020),
`https://www.cnbc.com/2020/07/18/us-reports-more-than-70000-new-
`coronavirus-infections-for-second-day-in-a-row.html
`Texas Sets State Record With More Than 10,000 New Coronavirus
`Cases Reported Thursday, NPR (Jul. 7, 2020),
`https://www.npr.org/sections/coronavirus-live-
`updates/2020/07/07/888755062/texas-sets-state-record-with-more-
`than-10-000-new-coronavirus-cases-reported-tue
`Reese Oxner et al., Texas is Heading Down a Dangerous Path, Local
`Leaders Warn as Coronavirus Cases and Hospitalizations Surge, THE
`TEXAS TRIBUNE (Jun. 22, 2020),
`https://www.texastribune.org/2020/06/22/texas-coronavirus-cases-
`hospitalizations-austin-houston-dallas/
`
`iv
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`IPR2020-01429
`U.S. Patent No. 9,769,556
`
`I.
`
`INTRODUCTION
`
`Petitioner Samsung Electronics America, Inc. (“Petitioner”) requests inter
`
`partes review of claims 1, 3, and 45 of U.S. Patent No. 9,769,556 (“the ’556 patent”).
`
`II. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
`
`Petitioner certifies that the ’556 patent is available for inter partes review
`
`(“IPR”), and that Petitioner is not barred or estopped from requesting IPR to
`
`challenge the claims on the grounds herein. Petitioner filed this Petition within one
`
`year of service of Patent Owner’s (“PO”) original complaint against Petitioner in
`
`district court.
`
`III.
`
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`A.
`
`Claims for Which Review is Requested
`
`Petitioner respectfully requests review of claims 1, 3, and 45 (“challenged
`
`claims”) of the ’556 patent, and cancellation of these claims under 35 U.S.C. § 311
`
`as unpatentable.
`
`Statutory Grounds of Challenge
`B.
`The challenged claims should be cancelled as unpatentable on the following
`
`ground:
`
`Ground 1: Claims 1, 3, and 45 are unpatentable under 35 U.S.C. § 103 as
`
`being obvious over International Patent Application Publication No. WO
`
`2011/121169 A1 which published in English (“Kari”) (Ex-1010) in view of U.S.
`
`1
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`

`

`IPR2020-01429
`U.S. Patent No. 9,769,556
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`Patent Application Publication No. 2007/0093279 A1 (“Janik”) (Ex-1013) and U.S.
`
`Patent No. 7,903,826 B2 (“Boersma”) (Ex-1007).
`
`The ’556 patent issued from U.S. Patent Application No. 14/215,833 filed
`
`March 17, 2014, which is a continuation-in-part application of U.S. Patent
`
`Application No. 13/734,871 filed January 4, 2013 (issued as U.S. Patent No.
`
`9,167,329), which in turn claims priority to three U.S. provisional applications: No.
`
`61/601,722 filed on February 22, 2012; No. 61/671,575 filed on July 13, 2012; and
`
`No. 61/712,136 filed on October 10, 2012.1 See Ex-1001, Cover.
`
`Kari published on October 6, 2011. Janik published on April 26, 2007.
`
`Boersma issued as a patent on March 8, 2011. Thus, Kari, Janik, and Boersma all
`
`qualify as prior art under 35 U.S.C. § 102(a)(1) with respect to the ’556 patent.2
`
`1 Samsung reserves the right to challenge any priority claim(s) made in the ’556
`
`patent.
`
`2 The ’556 patent contains at least one claim that has an effective filing date after
`
`March 15, 2013. Accordingly, the ’556 patent is subject to the provisions of the
`
`Leahy-Smith America Invents Act (“AIA”). Even if subject to pre-AIA law, all of
`
`the references relied on by Petitioner qualify as prior art to the challenged claims
`
`under one or more provisions of pre-AIA § 102.
`
`2
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`

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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art at the time of the alleged invention of the
`
`’556 patent (“POSITA”), which for purposes of this proceeding is early-2010
`
`through the beginning of 2014 (including March 17, 2014), would have had a
`
`bachelor’s degree in electrical engineering, computer science, or a similar field and
`
`one year of experience in consumer electronics product or control system design.
`
`The POSITA could have also obtained similar knowledge and experience through
`
`other means. Ex-1019, ¶23.
`
`V.
`
`OVERVIEW OF THE ’556 PATENT AND THE PRIOR ART
`
`A.
`
`The ’556 Patent
`
`The ’556 patent is generally directed to a set of headphones and audio system
`
`comprising “a first set of buttons for controlling a volume level of transmitted audio
`
`to the headphones and a second set of buttons for controlling a volume level of
`
`external audio played by the headphones.” Ex-1001, Abstract; see also Ex-1019,
`
`¶¶32-34. The ’556 patent also discloses that both transmitted audio from an
`
`electronic device and external audio comprising surrounding ambient noise received
`
`by a microphone coupled to the headphones may be played through the headphones.
`
`See Ex-1001, 23:43-58.
`
`The ’556 patent discloses that the headphones may be magnetically coupled
`
`to a holder (see, e.g., id., claims 1, 9, 18) or magnetically coupled to each other (see,
`
`3
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`e.g., id., claims 23, 28, 29, 36, 38-40). For example, the ’556 patent discloses that
`
`the “earphones” and/or “holder” may comprise “magnets” and/or “magnetically
`
`attractable surfaces,” which “enable[] the user to place the earphones in a convenient
`
`location when using the earphones and also when not in use.” Id., 13:32-34. Below
`
`is a representative embodiment:
`
`’556 patent, Ex-1001, Figs. 3A & B (annotated).
`In addition to storing earphones when not in use, the ’556 patent explains that
`
`“[t]he magnetic earphones and cord holding system 1100 is able to send a signal to
`
`activate and/or deactivate an electronic device 1105 such as a cell phone.” Id.,
`
`15:23-31; see also id., 15:32-35 (“Similarly, the magnetic earphones and cord
`
`holding system 1100 is able to send a signal to start, resume, or stop an electronic
`
`4
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`device such as an electronic media player or gaming device.”). The ’556 patent
`
`discloses that an electronic device controller receives a signal from an engagement
`
`detector and sends a signal to an electronic device activation circuit to operate the
`
`electronic device. Id., 14:54-58, 15:8-22. The ’556 patent explains that, “[i]n this
`
`manner, the user is able to use the magnetic earphones and cord holding system 1100
`
`to operate, activate and/or deactivate any programs or applications that are running
`
`on the electronic device 1105.” Id., 15:42-46.
`
`B.
`
`Kari
`
`Kari discloses a headset 100, a mobile device 109 with which the headset
`
`communicates wirelessly, and a holder 108, 110 to which the headset can be coupled
`
`or uncoupled. Ex-1010, [0022], [0025]-[0026]; see also Ex-1019, ¶35.
`
`Kari, Ex-1010, Figs 3a, 3b, 4 (annotated).
`
`5
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`The “wireless headset [is] configured to detect removal of the wireless headset from
`
`a holder” and to trigger a function based on that detection. Ex-1010, Abstract.
`
`Examples of functions that may be triggered by uncoupling the wireless headset
`
`from the holder include accepting a call which results “in the wireless headset 100
`
`being in an active call state, in which audio signals from a remote user are relayed
`
`to loudspeaker element 101” of the headset (id., [0029]), or streaming music from a
`
`media player (id., [0031]). The wireless communication between the headset and
`
`the mobile device may be a Bluetooth connection. Id., [0029].
`
`VI. CLAIM CONSTRUCTION
`
`In this proceeding, claim terms are typically given their ordinary and
`
`customary meanings, as would have been understood by a POSITA, at the time of
`
`the invention, taking into consideration the language of the claims, the specification,
`
`and the prosecution history of record. See Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312-16 (Fed. Cir. 2005) (en banc).
`
`In the related district court litigation, Petitioner has proposed to construe four
`
`terms: “activation signal,” “deactivation signal,” “decoupled,” and “couple[d]” (Ex-
`
`1020), which stem from disputes over whether the asserted claims cover the accused
`
`6
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`products.3 PO has taken the position neither these nor any other claim terms require
`
`construction. Ex-1021. Claim construction briefing is not scheduled to begin until
`
`August 26, 2020. Ex-1022.
`
`The Board, however, only construes the claims when necessary to resolve the
`
`underlying controversy in the IPR. See Toyota Motor Corp. v. Cellport Systems,
`
`Inc., IPR2015-00633, Paper 11, at 16 (Aug. 14, 2015) (internal quotations and
`
`citations omitted). Here, given the close correlation and substantial identity between
`
`the prior art references and the challenged claims, no express constructions of the
`
`claims are necessary to assess whether the prior art reads on the challenged claims.
`
`If the Board were to conclude that Petitioner’s proposed constructions in litigation
`
`should be adopted for purposes of this proceeding, the following discussion shows
`
`that the challenged claims are unpatentable under those constructions. See infra
`
`passim; Ex-1019, passim.
`
`3 Petitioner reserves all rights to raise additional claim construction and other
`
`arguments in district court as relevant and necessary to those proceedings. For
`
`example, Petitioner has not raised all challenges to the ’556 patent in this Petition,
`
`including invalidity under 35 U.S.C. § 112.
`
`7
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`VII. DETAILED EXPLANATION OF GROUNDS
`
`A.
`
`Ground 1: Kari, Janik, and Boersma Render Obvious Claims 1, 3,
`and 45
`
`1.
`
`Claim 1
`
`a.
`
`“An audio system comprising:”
`
`To the extent the preamble is limiting, Kari discloses this feature. Ex-1019,
`
`¶45. For example, Kari discloses “a wireless headset [100] configured to detect
`
`removal of the wireless headset from a holder.” Ex-1010, [0005]; see also id., [0037]
`
`(“Another technical effect of one or more of the example embodiments disclosed
`
`herein is that a carrying solution is provided for wireless headsets.”); Section
`
`VII.A.1.c infra. Kari discloses that wireless headset 100 comprises a loudspeaker
`
`element 101 and a microphone 102, and that “[t]he wireless headset 100 is generally
`
`configured to be worn by the user in such a way that an audio signal provided by the
`
`loudspeaker element 101 is audible for the user and the microphone 102 captures the
`
`voice of the user.” Id., [0021].
`
`b.
`
`“a. a holder body comprising one or more
`magnetically attractable first surfaces;”
`
`Kari in combination with Janik discloses or suggests this feature. Ex-1019,
`
`¶¶46-55.
`
`Kari discloses “a wireless headset 100” and corresponding “holder 108,”
`
`which provides “a carrying solution … for wireless headsets” (see Ex-1010, [0025]-
`
`8
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`[0026], [0037]), as well as a “holder 110 configured to be installed in a vehicle” (id.,
`
`[0027]).
`
`Kari, Ex-1010, Figs 3a, 3b, 4 (annotated).
`
`Kari also expressly teaches that “other types of holders 108, not shown in the
`
`drawings are possible. These may include desktop cradles, charging stations, and/or
`
`the like configured to provide a storage or holding solution, mechanical protection,
`
`battery charging, additional functions, and/or otherwise improve usability and/or
`
`value of the device.” Id., [0028]; see also Ex-1019, ¶47.
`
`Kari discloses that wireless headset 100 may be “coupled” and “uncoupled”
`
`from the holder (“holder body”). Compare Ex-1010, [0011] (“Fig. 3a is a diagram
`
`illustrating a wireless headset coupled with a holder ….”), with id., [0012] (“Fig. 3b
`
`is a diagram illustrating a wireless headset such as in Fig. 3a uncoupled from a
`
`9
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`holder ….”); see also id., [0022], [0026], Figs. 3a & 3b. Although Kari expressly
`
`acknowledges that many different types of holders are possible (id., [0028]), it does
`
`not expressly disclose coupling/uncoupling the headset from the holder using a
`
`magnetic surface of the earphones and a magnetically attractable surface attached to
`
`the holder body. However, it would have been obvious to modify the disclosure of
`
`Kari to incorporate such a technique based on the disclosure of Janik and the
`
`knowledge of a POSITA at the time of the alleged invention. Ex-1019, ¶48.
`
`For example, Janik discloses that a headset (“a set of head phones”) may be
`
`attached to a charging dock (“holder body”) using magnets. Ex-1013, [0058]; Ex-
`
`1019, ¶¶36, 49. In one embodiment, Janik discloses a headset 206 having
`
`neodymium magnets 24 and 26 (see id., [0042], Figs. 3 & 7), and a charging dock
`
`204 having a dock module 210 with neodymium magnets 70a and 70b (see id.,
`
`[0048], Figs. 8 & 11). Janik discloses that “[t]he act of placing headset 206 on car
`
`charging dock 204 involves minimum effort by the user because the magnetic
`
`attachment means acts to pull headset 206 into the correct position and orientation
`
`when headset 206 comes in close proximity to docket module 210.” Id., [0058]; see
`
`also id., claim 11 (“[T]he dock assembly further comprises a first magnet and the
`
`headset further comprises a second magnet, and wherein the first and second
`
`magnets are disposed to draw the dock assembly and the headset together such that
`
`the first docking connector connects with the second docking connector.”); id.,
`
`10
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`

`

`IPR2020-01429
`U.S. Patent No. 9,769,556
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`[0066] (describing a desktop embodiment of the charging dock to which the headset
`
`can be connected). An embodiment of Janik including charging dock 204, wireless
`
`headset 206, and dock module 210 is provided below:
`
`Janik, Ex-1013, Fig. 15 (annotated).
`
`A POSITA would have understood that Janik’s magnets are magnetically
`
`attractable surface(s) because they can be attached to an opposite polarity magnet.
`
`Ex-1019, ¶¶50-52. This general understanding is confirmed by the ’556 patent,
`
`which discloses that magnets are magnetically attractable surfaces. Ex-1001, 13:62-
`
`63 (“In some embodiments, the one or more magnetically attractable surfaces 1110
`
`are magnets.”); id., 16:67-17:2 (“In some embodiments, the one or more
`
`magnetically attractable surfaces 1510 are magnets.”).
`
`A POSITA would also have understood that Janik’s headset 206 can be
`
`detached from the dock module 210, for example to be placed on a user’s ear. See
`
`11
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`Ex-1013, [0014] (“What is needed is a wireless headset system … that allows
`
`operation during charging and easy removal for answering calls.”); id., [0058]
`
`(“When the user is not actively on a mobile phone call, headset 206 may be removed
`
`from the user’s ear and placed on car charging dock 204.”); see also Ex-1019, ¶¶50-
`
`52.
`
`A POSITA would have been motivated to incorporate magnets into the
`
`headset and holder of Kari to attach/detach them, similar to the manner disclosed by
`
`Janik, for several reasons. Id., ¶53. For example, a POSITA would have been
`
`motivated to use known techniques for attaching/detaching a headset to a holder, and
`
`thus would have had reason to look to implement such known techniques in the
`
`system disclosed in Kari. Id. Given Kari discloses attaching/detaching the headset
`
`to charging stations, desktop cradles or the like, but does not disclose the technique
`
`for implementing such attaching/detaching, a POSITA would have been motivated
`
`to look at techniques for accomplishing this functionality and realized that one
`
`known technique for doings so was to use magnets, like that disclosed in Janik. Id.
`
`And modifying Kari to use magnets to attach/detach the headset 100 to a holder
`
`would have amounted to no more than the application of a known technique
`
`(coupling/decoupling a headset to a holder using magnets as disclosed in Janik) to a
`
`known device (the headset and holder of Kari) ready for improvement to yield
`
`12
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`predictable results (coupling/decoupling the headset and holder of Kari using
`
`magnets). Id.
`
`A POSITA would have further been motivated to implement the Kari-Janik
`
`system because it would have been easier to use than other known techniques for
`
`attaching a headset to a holder body (e.g., friction fit). Id., ¶54. A POSITA would
`
`have been motivated to implement the Kari-Janik magnetic coupling technique
`
`because, as disclosed by Janik, it “involves minimal effort by the user because the
`
`magnetic attachment means acts to pull headset 206 into the correct position and
`
`orientation when headset 206 comes in close proximity 210.” Ex-1013, [0058]; see
`
`also Ex-1019, ¶54.
`
`Accordingly, a POSITA would have been motivated to modify Kari in view
`
`of Janik to implement a system in which the holder (“holder body”) includes one or
`
`more magnets (“one or more magnetically attractable first surfaces”). Ex-1019,
`
`¶¶53-55.
`
`c.
`
`“b. a set of head phones each comprising a magnetic
`second surface for removably coupling with the one
`or more magnetically attractable first surfaces;”
`
`Kari in combination with Janik discloses or suggests this feature. Ex-1019,
`
`¶¶56-62.
`
`For the same reasons discussed supra in Section VII.A.1.b, it would have been
`
`obvious to a POSITA to modify the wireless headset 100 (“set of head phones”) to
`
`13
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`incorporate one or more magnets (“a magnetic second surface”). Ex-1019, ¶¶46-55,
`
`57. Indeed, having modified the holder (“holder body”) of Kari to include one or
`
`more magnets (“one or more magnetically attractable first surfaces”), it would have
`
`been obvious and a matter of common sense to a POSITA to incorporate one or more
`
`magnets (“a magnetic second surface”), such as the neodymium magnets 24 and 26
`
`of Janik, into the wireless headset (“set of head phones”) of Kari in order to
`
`removably couple the wireless headset (“set of head phones”) to the holder (“holder
`
`body”) using magnets. Id., ¶¶53-55; see also B/E Aerospace, Inc. v. C&D Zodiac,
`
`Inc., 962 F.3d 1373, 1380-81 (Fed. Cir. 2020) (“[C]ommon sense has long been
`
`recognized to inform the analysis of obviousness if explained with sufficient
`
`reasoning.”) (internal quotations and citation omitted).
`
`To the extent PO may try to argue the Kari-Janik system does not disclose a
`
`“set of head phones,” that argument would be misplaced. As an initial matter, a set
`
`can have one element. Ex-1019, ¶58. Accordingly, the headset of Kari—which
`
`clearly has one loudspeaker element 101—meets the plain language of the claim. Id.
`
`To the extent PO argues or the Board determines that a “set of head phones”
`
`requires at least two head phones, it would have been obvious to a POSITA to
`
`modify the headset of the Kari-Janik system to have two head phones. Ex-1019,
`
`¶¶59-62. Kari itself suggests such a modification given that it discloses that the
`
`headset 100 may be “stereophonic” and may be used for “listening to music.” See
`
`14
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`IPR2020-01429
`U.S. Patent No. 9,769,556
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`Ex-1010, [0002]-[0003], [0021]. A POSITA would have recognized that
`
`stereophonic (i.e., stereo) sound, which is commonly used to listen to music, is
`
`produced by outputting sound from two speakers (“head phones”). Ex-1019, ¶59.
`
`Having recognized the advantage of a wireless headset with two head phones (e.g.,
`
`to listen to music in stereo sound), a POSITA would have been motivated to
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`implement a wireless headset with two head phones. Ex-1019, ¶60. Doing so would
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`have been within a POSITA’s skill and s/he would have had a reasonable expectation
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`of success as such dual-earphone wireless headsets were commonly known in the art
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`at the time of the alleged invention. Id. For example, Jobling discloses a wireless
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`headset for communication with an electronic device having two head phones
`
`(orange), as shown in annotated Fig. 14 below:
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`Jobling, Ex-1008, Fig. 14 (annotated).
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`Implementing a dual-head phone wireless headset as exemplified by Jobling
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`into the Kari-Janik system would have amounted to no more than an application of
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`a known technique (a dual-head phone wireless headset) to a known device (the
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`single head phone wireless headset of Kari-Janik) ready for improvement to yield
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`predictable results (to achieve stereo sound to, for example, listen to music). Ex-
`
`1010, ¶61; see also Ex-1019, ¶¶61-62. Moreover, a POSITA would have understood
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`that modifying the Kari-Janik system in this manner would be compatible with the
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`holder/dock of the Kari-Janik system because the holder/dock of the Kari-Janik
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`system is designed for use with a single-body wireless headset and a POSITA would
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`have known how to modify the Kari-Janik system to incorporate two head phones
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`into a single-body wireless headset (e.g., as exemplified by Jobling). Ex-1019, ¶62.
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`d.
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`“c. a headphones controller coupled to receive an
`activation signal when a magnetic decoupling is
`detected as one or more of the magnetic second
`surfaces of the set of head phones is removed and
`decoupled from one of the one or more magnetically
`attractable first surfaces,”
`
`Kari in combination with Janik discloses or suggests this feature. Ex-1019,
`
`¶¶63-72.
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`The “headphones controller” plays a limited function: it is configured to
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`receive signal(s) from the first and second sets of controls, process the signal(s), and
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`send the signal(s) either to the transmitted audio adjustment circuit to turn up or turn
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`down the volume of the transmitted audio or to the external audio adjustment circuit
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`to turn up or turn down the volume of external audio received by a microphone and
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`played through the headphones. See Ex-1001, 24:9-31, 25:34-55, Figs. 25 & 26; see
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`also Ex-1019, ¶¶64-66. However, the ’556 patent does not provide any detail on the
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`processing performed by headphones controller. Ex-1019, ¶64. Accordingly, the
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`described headphones controller merely receives signal(s) (i.e., signal(s) from the
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`first and second sets of controls) and sends signal(s) to a component configured to
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`take some action based on the signal(s) (i.e., transmitted audio adjustment circuit
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`2550 or external audio adjustment circuit 2555). Ex-1019, ¶¶64-66. An
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`embodiment of the audio system of the ’556 patent including headphones controller
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`2540 is shown in Fig. 25:
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`’556 patent, Ex-1001, Fig. 25;
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`See also id., 24:11-15, 25:36-40, Fig. 26 (2640). The ’556 patent provides no further
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`details regarding the function of headphones controller 2540. Ex-1019, ¶¶64-66.
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`Kari discloses “detecting removal of a wireless headset from a holder.” Ex-
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`1010, claim 14; see also id., [0005], [0007], [0029], Fig. 6; see also Ex-1019, ¶67.
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`More particularly, Kari discloses mechanical interface 107 (that can, for example,
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`be used to charge the headset 100) that further comprises a detection switch 113.
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`Ex-1010, [0022]. Although the interface 107 is described as “mechanical,” Kari
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`explicitly discloses that the detection switch 113 can also be magnetic. Id.
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`To be sure, in one instance Kari states that “if the wireless headset 100 is
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`removed from the holder 108, an actuation of the mechanical interface 107 of Fig. 2
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`occurs.” Id., [0029]; see also Ex-1019, ¶68. A POSITA would have understood this
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`disclosure of Kari to refer to the fact that the detection switch 113 detects the
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`removal of the headset from the holder. Ex-1019, ¶68. That is because a POSITA
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`would have understood Kari to explicitly disclose in both paragraph 22 and Fig. 2
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`that it is the detection switch 113 (which can be part of interface 107) that “is
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`configured to be actuated according to whether the wireless headset 100 is coupled
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`with a holder.” Ex-1010, [0022]; see also Ex-1019, ¶68. Kari also explicitly states,
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`however, that the detection switch 113 can be magnetic. Ex-1010, [0022]. A
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`POSITA would have understood, therefore, that Kari does not suggest or require
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`that a physical actuation of a mechanical detector must occur to signify removal of
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`the headset from the holder, because a magnetic detector can generate a signal
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`representative of whether the headset is physically removed from the holder based
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`on the strength of a magnetic field. Ex-1019, ¶68.
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`One exemplary method that may be triggered by uncoupling the wireless
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`headset from the holder is accepting a call which results “in the wireless headset 100
`
`being in an active call state, in which audio signals from a remote user are relayed
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`to loudspeaker element 101” of the headset. Ex-1010, [0029]; see also id., [0006]-
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`[0007], [0029], Fig. 6, claims 1 & 14. Another example is streaming music from a
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`media player. See id., [0031]. Kari further discloses that this occurs by “establishing
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`a communication link between the wireless headset and a mobile device.” Id.,
`
`[0007], claims 14 & 19. Accordingly, Kari discloses a wireless headset configured
`
`to trigger a function on a mobile device based on detecting that the headset has been
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`uncoupled from a holder. Ex-1019, ¶¶69-70.
`
`Kari discloses the wireless headset having “a transceiver 105, such as a
`
`Bluetooth transceiver” and using the Bluetooth protocol for the wireless headset to
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`communicate with and control a mobile device. See, e.g., Ex-1010, [0022], [0029].
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`A POSITA would have understood, therefore, that in an embodiment in which the
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`headset is communicating with the mobile device using the Bluetooth protocol,
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`accepting a phone call or initiating music playback necessarily would have required
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`the processor 104 to send a signal to cause the acceptance or initiation of playback
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`(“an activation signal”) to the mobile device (“electronic device”). Ex-1019, ¶71;
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`see also B/E Aerospace, 962 F.3d at 1380-81 (“common sense has long been
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`recognized to inform the analysis of obviousness if explained with sufficient
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`reasoning”).
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`Accordingly, in the Kari-Janik system, a POSITA would have understood that
`
`processor 104 of Kari (“headphones controller”) receives a signal (“an activation
`
`signal”) when the magnetic detection switch 113 detects a decoupling (“a magnetic
`
`decoupling is detected”) as one or more magnets (“a magnetic second surface”) of
`
`the wireless headset (“set of head phones”) are removed from the one or more
`
`magnets (“one or more magnetically attractable first surfaces”) of the holder
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`(“holder body”). Ex-1019, ¶72.
`
`e.
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`“wherein the activation signal causes transmitted
`audio to be played in the headphones;”
`
`Kari in combination with Janik discloses or suggests this feature. Ex-1019,
`
`¶¶73-74.
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`Kari discloses that “accepting the connection attempt” (e.g., a phone call)
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`results in “audio signals from a remote user [being] relayed to loudspeaker element
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`101” of headset 100. Id., [0029]. In embodiments in which the connection attempt
`
`is a stream of audio, “accepting the connection attempt results in the wireless headset
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`100 being in an active state in which the audio stream is reproduced using the
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`loudspeaker element 101.” Id., [0031]. Accordingly, Kari discloses receiving a
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`signal from detection switch 113 (“the activation signal”) that causes audio signals
`
`(“transmitted audio”) from a remote user to be relayed to loudspeaker element 101
`
`in wireless headset 100 (“the headphones”).
`
`f.
`
`“d. a first set of controls for controlling a volume of
`the transmitted audio played by the head phones;
`and”
`
`Kari in combination with Janik and Boersma discloses or suggests this
`
`feature. Ex-1019, ¶¶75-81.
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`In discussing wireless headsets in existence at the time, Kari recognized that
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`wireless headset units “comprise input devices for controlling various features the
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`unit, such as one or more buttons for switching the unit on or off, and receiving or
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`ending a call.” Ex-1010, [0003]; see also Ex-1019, ¶76. Kari, however,