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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Seung Jin Kim
`In re Patent of:
`10,455,066 Attorney Docket No.: 39521-0092IP3
`U.S. Patent No.:
`Oct. 22, 2019
`
`Issue Date:
`Appl. Serial No.: 15/563,937
`
`Filing Date:
`Oct. 2, 2017
`
`Title:
`MOBILE SYSTEM WITH WIRELESS EARBUD
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,455,066 PURSUANT TO 37 C.F.R. §§ 311–319, 37 C.F.R. § 42
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`TABLE OF CONTENTS
`
`REQUIREMENTS FOR IPR .......................................................................... 1 
`  Grounds for Standing ................................................................................. 1 
`  Challenge and Relief Requested ................................................................. 1 
`THE ’066 PATENT ......................................................................................... 2 
`  CLAIM CONSTRUCTION ............................................................................ 2 
`  UNPATENTABILITY GROUNDS ................................................................ 5 
`  GROUND 1A: Claims 1, 4, and 6 are obvious over BT Headset, Lydon,
`and Rabu ..................................................................................................... 5 
`1.  Overview of BT Headset ....................................................................... 5 
`2.  Overview of Lydon ............................................................................... 7 
`3.  Overview of Rabu ................................................................................. 8 
`4.  Motivation to Combine BT Headset with Lydon and Rabu ............... 10 
`5.  Claim 1 ................................................................................................ 15 
`6.  Claim 4 ................................................................................................ 34 
`7.  Claim 6 ................................................................................................ 38 
`  GROUND 1B: Claims 9, 10, 14, 21, 26, 28, 30, 34, and 36 are obvious
`over BT Headset, Lydon, Rabu, and Kalayjian ........................................ 41 
`1.  Overview of Kalayjian ........................................................................ 41 
`2.  Motivation to Combine BT Headset, Rabu, Lydon, and Kalayjian .... 41 
`3.  Claim 9 ................................................................................................ 44 
`4.  Claim 10 .............................................................................................. 56 
`5.  Claim 14 .............................................................................................. 57 
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`6.  Claim 21 .............................................................................................. 57 
`7.  Claim 30 .............................................................................................. 62 
`8.  Claim 34 .............................................................................................. 64 
`9.  Claim 36 .............................................................................................. 65 
`  GROUND 1C: Claim 38 is obvious over BT Headset, Lydon, Rabu,
`Kalayjian, and Kim ................................................................................... 67 
`  DISCRETIONARY DENIAL OF THE INSTANT PETITION IS NEITHER
`APPROPRIATE NOR EQUITABLE ........................................................... 73 
`  District Court Proceeding ......................................................................... 73 
`  Previous Petition ....................................................................................... 76 
`  FEES .............................................................................................................. 76 
`  CONCLUSION .............................................................................................. 76 
`  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 76 
`  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................... 76 
`  Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 76 
`  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................... 77 
`  Service Information .................................................................................. 78 
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
`
`EXHIBITS
`
`U.S. Patent No. 10,455,066 to Kim (“the ’066 Patent”)
`
`Excerpts from the Prosecution History of the ’066 Patent
`
`Reserved
`
`Reserved
`
`U.S. Patent No. 8,086,281 to Rabu et al. (“Rabu”)
`
`Reserved
`
`U.S. Patent No. 8,078,787 to Lydon et al. (“Lydon”)
`
`U.S. Patent Application Publication No. 2008/0125040 to
`Kalayjian (“Kalayjian”)
`
`Reserved
`
`U.S. Patent Application Publication No. 2017/0272561 to Kim
`et al. (“Kim”)
`
`
`APPLE-1009-1014
`
`
`APPLE-1015
`
`
`
`
`
`
`APPLE-1001
`
`APPLE-1002
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`APPLE-1003
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`APPLE-1004
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`APPLE-1005
`
`APPLE-1006
`
`APPLE-1007
`
`APPLE-1008
`
`
`APPLE-1016
`
`APPLE-1017
`
`Reserved
`
`U.S. Provisional Patent Application No. 62/142,978 (“the ’978
`Provisional”)
`
`
`APPLE-1018-1021
`
`APPLE-1022
`
`Reserved
`
`Reserved
`
`Complaint, Pinn, Inc. v Apple Inc., Case No. 8:19-cv-1805,
`C.D. Cal, Sept. 20, 2019.
`
`
`APPLE-1023-1029
`
`APPLE-1030
`
`First Amended Complaint, Pinn, Inc. v Apple Inc., Case No.
`8:19-cv-1805, C.D. Cal, Nov. 21, 2019
`
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`iii
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`APPLE-1031
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`APPLE-1032
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`APPLE-1033
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`APPLE-1034
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`APPLE-1035
`
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`APPLE-1036
`
`
`APPLE-1037
`
`
`APPLE-1038
`
`
`APPLE-1039
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`APPLE-1040
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`APPLE-1041
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`APPLE-1042
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
`
`Reserved
`
`Scheduling Order, Pinn, Inc. v Apple Inc., Case No. 8:19-cv-
`1805, C.D. Cal, Mar. 26, 2020
`
`Scheduling Order, Syneron Med. Ltd. v. Invasix, Inc., Case No.
`8-16-cv-00143, C.D. Cal, July 12, 2016
`
`Order Vacating Dates, Syneron Med. Ltd. v. Invasix, Inc., Case
`No. 8-16-cv-00143, C.D. Cal, Jan. 11, 2018
`
`Scheduling Order, Nichia Corp. v. Feit Electric Co., Inc., Case
`No. 2-18-cv-01390, C.D. Cal, Jul. 31, 2018
`
`Amended Scheduling Order, Nichia Corp. v. Feit Electric Co.,
`Inc., Case No. 2-18-cv-01390, C.D. Cal, Jan. 17, 2019
`
`Scheduling Order, International Technologies and Systems
`Corp. v. Samsung Electronics Co., Ltd., Case No. 8-17-cv-
`01748, C.D. Cal, Aug. 13, 2018
`
`Order re Claim Construction, Summary Judgment, and Trial
`Schedules, International Technologies and Systems Corp. v.
`Samsung Electronics Co., Ltd., Case No. 8-17-cv-01748, C.D.
`Cal, Aug. 27, 2019
`
`Reserved
`
`Reserved
`
`Order, EVS Codec Technologies, LLC v. Oneplus Technology
`(Shenzen) Co., Ltd., Case No. 2:19-CV-00057-JRG, E.D. Tex.,
`Apr. 13, 2020
`
`Order, Infernal Tech., LLC v. Sony Interactive Entertainment
`America, LLC, Case No. 2:19-CV-00248-JRG, E.D. Tex., Mar.
`27, 2020
`
`iv
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`APPLE-1044
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`APPLE-1045
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`APPLE-1046
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`APPLE-1047
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`APPLE-1048-1056
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`APPLE-1057
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`APPLE-1043
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`APPLE-1058
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`APPLE-1060
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`APPLE-1100
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`APPLE-1101
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`APPLE-1102
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`APPLE-1103
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`Joseph Guzman, “Fauci says second wave of coronavirus is
`‘inevitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-
`disasters/495211-fauci-says-second-wave-of-coronavirus-is
`
`U.S. Patent No. 8.489,151 to Van Engelen et al.
`
`U.S. Patent No. 8.737,650 to Pederson
`
`Jabra Eclipse User Manuel (2015)
`
`U.S. Patent Publication No. 2011/0306393 to Goldman et al.
`
`Reserved
`
`Preliminary Infringement Contentions, Pinn, Inc. v. Apple Inc.,
`Case No. 8:19-cv-01805, C.D. Cal.
`
`Reserved
`
`Declaration of Dr. Jeremy R. Cooperstock
`
`iPhone Bluetooth Headset User’s Guide (Apple Inc. 2007)
`
`Daniel Eran Dilger, “Review: Apple iPhone Bluetooth
`Headset”, AppleInsider.com (July 30, 2007), available at:
`https://appleinsider.com/articles/07/07/30/review_apple_iphone
`_bluetooth_headset
`
`Jeremy Horwitz, “Review: Apple iPhone Bluetooth Headset”,
`iLounge.com (July 26, 2007), available at:
`https://www.ilounge.com/index.php/reviews/entry/apple-
`iphone-bluetooth-headset
`
`Dave Rees, “Apple iPhone Bluetooth Headset”, The Gadgeteer
`(January 4, 2008), available at: https://the-
`gadgeteer.com/2008/01/04/apple_iphone_bluetooth_headset/
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`v
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`APPLE-1104
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`APPLE-1105
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`Declaration of Jeffery Terlizzi
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`Affidavit of Duncan Hall
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 1, 4, 6, 9, 10, 14, 21, 30, 34, 36, and 38 (“the Challenged
`
`Claims”) of U.S. Patent No. 10,455,066 (“the ’066 Patent”).
`
`
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`REQUIREMENTS FOR IPR
` Grounds for Standing
`Petitioner certifies that the ’066 Patent is available for IPR. Petitioner is not
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`barred from requesting review.
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` Challenge and Relief Requested
`Petitioner requests IPR of the challenged claims on the grounds noted below.
`
`Dr. Jeremy R. Cooperstock provides supporting explanations in his Declaration
`
`(APPLE-1060).
`
`Ground
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`1A
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`1B
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`1C
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`Claims
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`1, 4, 6
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`Basis
`
`§103: Obvious based on BT Headset,
`Lydon, and Rabu
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`9, 10, 14, 21, 30, 34, 36 §103: Obvious based on BT Headset,
`Lydon, Rabu, and Kalayjian
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`38
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`Obvious based on BT Headset, Lydon,
`Rabu, Kalayjian, and Kim
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`
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`Each reference pre-dates the earliest-filed provisional application (filed
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`4/3/2015) and qualifies as prior art:
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`1
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`Reference
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`BT Headset
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`Rabu
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`Lydon
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`Date
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`2007 (published)
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`12/27/2011 (issued)
`
`12/13/2011 (issued)
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`Kalayjian
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`5/29/2008 (published)
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`Kim
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`8/25/2014 (filed)
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`Section
`
`102(a)(1)
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`102(a)(1)
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`102(a)(1)
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`102(a)(1)
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`102(a)(2)
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` THE ’066 PATENT
`The ’066 Patent describes “a personal wireless media station” that can
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`wirelessly connect to a device such as a smart phone. APPLE-1001, 4:60-65,
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`12:24-28, FIG. 7. The media station includes a base station and a wireless earbud.
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`APPLE-1001, 5:5-7, FIG. 4A. The earbud can be docked to and undocked from
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`the base station. APPLE-1001, 5:10-12, 5:25-26, 6:2-3, FIGS. 4A, 4B. When the
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`earbud is undocked from the base station, the earbud can play back sound received
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`from the base station or device. APPLE-1001, 9:6-12, 15:49-63, 18:35-42, 28:8-
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`16. When the earbud is docked to the base station, the earbud battery is charged,
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`and components of the earbud are disabled. APPLE-1001, 22:28-32, 28:29-38,
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`30:6-10.
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` CLAIM CONSTRUCTION
`In the parallel litigation, the Court construed several claim terms. The
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`constructions are set forth below:
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`Term
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`District Court’s Construction
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`“wirelessly pairing”
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`“establishing a trusted relationship
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`“wireless pairing”
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`between two devices that allows them
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`to communicate wirelessly”
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`“wirelessly paired”
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`“a trusted relationship is established
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`between two devices that allows them
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`to communicate wirelessly”
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`“smartphone”
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`“mobile device that can communicate
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`on a cellular network (and can do so
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`without needing to communicate
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`through another device), that can
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`perform many of the functions of a
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`computer, and that can be held by
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`hand”
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`“mobile application”
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`“software application installed on a
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`mobile computing device”
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`3
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`“in response to pressing of the user
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`“in response to pressing of the user
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`input button, the at least one processor
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`input button, the at least one processor
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`is configured to execute computer
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`is configured to execute computer
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`program instructions stored in the at
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`program instructions stored in the at
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`least one memory to initiate processing
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`least one memory to initiate processing
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`for the wireless pairing with the
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`for the wireless pairing with the
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`smartphone such that the wireless
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`smartphone to enable the wireless
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`earbud receives audio data originated
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`earbud to receive and play audio data
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`from the smartphone and plays audio
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`originated from the smartphone”
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`using the audio data from the
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`smartphone”
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`“circuitry... configured to obtain
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`Plain meaning
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`characteristics of the wireless earbud
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`and send the characteristics to the at
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`least one processor”
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`“wherein the wireless earbud is not
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`Plain meaning
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`capable of wirelessly sending data to
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`the mobile base station”
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`4
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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` UNPATENTABILITY GROUNDS
` GROUND 1A: Claims 1, 4, and 6 are obvious over BT Headset,
`Lydon, and Rabu
`1. Overview of BT Headset
`Apple introduced a Bluetooth Headset system along with the iPhone in
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`2007. APPLE-1060, ¶30; APPLE-1104, ¶4. The Apple Bluetooth Headset system
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`is described in APPLE-1100 (“User’s Guide”), APPLE-1101 (“Dilger”), APPLE-
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`1102 (“Horwitz”), and APPLE-1103 (“Rees”) (collectively referred to as “BT
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`Headset”), which each were publicly available as printed publications before the
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`filing of the ’066 patent in April 2015. APPLE-1104, ¶5; APPLE-1105. BT
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`Headset described the key structures and functionalities of the Challenged Claims
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`almost ten years before the Critical Date. APPLE-1060, ¶30. BT Headset
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`described that the system included a wireless earbud, a “Dual Dock,” and a “Travel
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`Cable.” APPLE-1100, 2-3; APPLE-1101, 1; APPLE-1102, 2; APPLE-1103, 2-3.
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`The Dual Dock and Travel Cable will be referred to collectively as the “charging
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`station.”
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`5
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`wireless
`earbud
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`Travel
`Cable
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`Dual Dock
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`BT Headset
`APPLE-1100, 2
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`wireless
`earbud
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`BT Headset
`APPLE-1100, 3
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`wireless earbud
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`Travel Cable
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`Dual Dock
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`BT Headset, APPLE-1102, 2 (cropped)
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`6
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`2. Overview of Lydon
`Lydon describes an “intermediate device,” similar to the BT Headset
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`charging stations, that connects to a host device, e.g., an “iPhoneTM mobile
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`device,” and an accessory, e.g., a wireless headset. APPLE-1007, 3:10-20, 7:29-
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`51, 8:27-9:57, 11:38-54, 23:64-24:3, FIGS. 1A-1B, 9B. As shown in Lydon’s FIG.
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`1A, the intermediate device 106 includes receptacles 114 and 116 for receiving a
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`host device 102 and an accessory 104. APPLE-1007, 7:29-8:52; APPLE-1060,
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`¶36. The accessory 104 may be a wireless headset, stereo headphone, or remote
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`control. Id., 3:10-20.
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` system
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`host device
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`accessory
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`intermediate
`device
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`receptacles
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`Lydon (APPLE-1007), FIG. 1A
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`
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`Lydon’s intermediate device includes a “controller (e.g., microcontroller)”
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`7
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`that “execute[s] one or more control programs… stored in memory (e.g.,
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`programmable read-only memory) integrated with controller.” Id., 10:56-11:3.
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`The controller executes the control programs to perform processing for wireless
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`pairing of the smartphone and headset, including detecting the presence of the
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`smartphone and the headset, communicating with the smartphone and the headset,
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`and forwarding or “tunneling” commands received from one device to the other.
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`Id., 7:14-22, 9:50-57, 11:3-16, 12:42-49, 16:4-17:24, 18:7-9, 18:62-65, 21:34-49;
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`APPLE-1060, ¶37. Lydon further discloses that the wireless pairing process “may
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`be initiated in response to a user request,” for example, “the user might operate a
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`control located on … intermediate device … to indicate that a pairing should be
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`established.” Id., 23:23-33.
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`3. Overview of Rabu
`Rabu describes an apparatus that is similar to the BT Headset Dual Dock or
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`Travel Cable described in BT Headset. APPLE-1060, ¶38. In fact, Rabu’s FIG. 5b
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`(see also FIG. 1) is similar to the Dual Dock, and Rabu’s FIG. 6a is similar to the
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`Travel Cable:
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`8
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`connection
`hole
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`Rabu (APPLE-1005), FIG. 5b
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`connection
`hole
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`Rabu (APPLE-1005), FIG. 6a
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`wireless
`earbud
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`connection
`Dual Dock
`hole
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`BT Headset Dual Dock
`(APPLE-1100), 2
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`Travel
`Cable
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`connection
`hole
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`wireless
`earbud
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`BT Headset Travel Cable
`(APPLE-1100), 3
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`9
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`Rabu’s apparatus includes a processor that provides intelligent data and power
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`transfer, and can charge a device, like a wireless headset. APPLE-1005, 2:7-10,
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`2:64-66, 4:42-67, 5:9-43, 6:4-14.
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`The phone port 204 in Rabu’s charging device can be a wireless port.
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`APPLE-1005, 3:54-67. As such, the apparatus and phone can be linked together
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`using different wireless standards and/or protocols, including the Bluetooth
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`standard. APPLE-1005, 1:41-46. The phone can be coupled to the charging
`
`device wirelessly and “information and/or power can be wirelessly exchanged”
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`between the charging device and the phone through the phone port 204. APPLE-
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`1005, 4:35-38, 10:21-24; APPLE-1060, ¶¶39-41. When a phone and a headset are
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`electrically coupled to the apparatus, the apparatus’s processor performs functions
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`to automatically pair the two devices together, including putting the headset in
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`discoverable mode and providing the headset’s Bluetooth pin to the phone.
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`APPLE-1005, 14:5-15:14. The phone wirelessly communicates with the charging
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`device to obtain headset information and the Bluetooth pin of the headset.
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`APPLE-1005, 14:5-15:14.
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`4. Motivation to Combine BT Headset with Lydon and Rabu
`Lydon discloses a user-initiated pairing method where “the user might
`
`operate a control located on… intermediate device… to indicate that a pairing
`
`should be established.” APPLE-1007, 23:23-33. It would have been obvious to a
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`10
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`POSITA to implement a control mechanism, such as a button, on the charging
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`
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`station to receive user input to initiate pairing between the earbud and the
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`smartphone, as suggested by Lydon. APPLE-1060, ¶¶64, 110. It would also have
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`been obvious to implement a microcontroller that executes control programs stored
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`in memory to initiate processing for the wireless pairing of the earbud and the
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`smartphone in response to the user selection of a button on the charging station.
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`APPLE-1007, 7:14-22, 10:56-11:16, 16:4-17:24, 18:62-65, 21:34-49, 23:23-33;
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`APPLE-1060, ¶¶64, 110.
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`In addition, while it would have been obvious to implement a user input
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`button for wireless pairing on the charging station, such a button could also be
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`implemented on the headset as a matter of design choice. APPLE-1060, ¶¶65, 111.
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`The BT Headset earbud includes a user input button for wireless pairing. APPLE-
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`1100, 4, 8. Such a button could be used to initiate pairing when located on the
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`earbud rather than the charging station, as a matter of design choice. APPLE-
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`1060, ¶¶65, 111. A POSITA would have recognized the existence of limited few
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`options for the position of such a user input button, and they would have readily
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`appreciated that the button could be used to execute an operation the user wants to
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`execute such as pairing, whether positioned on the charging station or the earbud.
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`See e.g., APPLE-1007, 23:23-33; APPLE-1044, 5:41-43, 5:65-66, 6:44-50, 9:4-9,
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`16:60-65; APPLE-1045, 11:19-21, 11:61-64; APPLE-1046, 6, 12, 15, 18, 24;
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`APPLE-1047, [0007], [0073], [0077], [0096]; APPLE-1060, ¶¶65, 111. In general,
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`both the charging station and the earbud may be devices that can be held by a
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`user’s hand and would thus provide a practical location to implement user
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`interfaces such as buttons. APPLE-1060, ¶¶65, 111. This would make it easy and
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`convenient for a user to provide input. Further, since the devices are configured to
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`communicate with each other, the selection of a button on one device can be used
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`to trigger operations on the other device. Id. The device on which the button is
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`located can send instructions to the other device to execute instructions for
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`completing the operations. Id.
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`In view of these teachings, it would have been obvious to a POSITA that the
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`charging station would offer a viable option for positioning the button, and indeed
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`would have combined the teachings of Lydon with BT Headset in the manner
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`described above so that a user may control when the earbud and smartphone are
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`paired. See, e.g, APPLE-1007, 23:23-33. Doing so avoids automatic pairing with
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`devices that the user is not interested in pairing with. APPLE-1060, ¶¶66, 112.
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`For example, without a user input, automatic pairing may occur with any undesired
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`device that is connected to the charging station. Id. By implementing the
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`requirement of a user input through a button to initiate pairing, either on the
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`charging device or the earbud, a user can control with which devices the user
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`desires to seek a paired connection. Id.
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`Furthermore, combining the teachings of Lydon with BT Headset requires
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`nothing more than applying a known method (e.g., button for receiving user input)
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`to known systems, which would yield the very predictable result of having a button
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`on the charging station (or earbud), and the selection of which would cause a
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`microcontroller in the charging station to execute control programs stored in
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`memory to initiate processing for the wireless pairing of the earbud and the
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`smartphone. APPLE-1060, ¶¶67, 113. Each of BT Headset and Lydon include
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`intelligent charging systems that have processors, memory, circuitry, and
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`intelligence to facilitate charging, pairing, and other operations of the apparatus.
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`Id. Thus, the combination of their teachings would have been predictable,
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`straightforward, and would be a natural extension of their already-similar
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`functionalities and disclosures. Id. A POSITA would have recognized that there
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`was a finite number of places where a user input button could be placed, including
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`on the charging station. Id. A POSITA would have been motivated to combine
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`BT Headset with Lydon to simplify the design, and to minimize the number of
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`parts that would be placed on the space-constrained wireless earbud. Id. Apple
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`already possessed such designs, such as in Lydon, and it would have been a simple
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`combination for Apple to make BT Headset using its own technologies that
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`predated the Pinn patents by many years. APPLE-1060, ¶¶67, 114.
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`Additionally, Rabu discloses that the phone can be coupled to the charging
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`device wirelessly and “information and/or power can be wirelessly exchanged”
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`between the charging device and the phone through the phone port 204. APPLE-
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`1005, 4:35-38, 10:21-24. A POSITA would have recognized that the predictable
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`modification of BT Headset (as modified by Lydon) as suggested by Rabu would
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`include implementing the system, including both the charging station and the
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`earbud, to be capable of wirelessly pairing with a smartphone so that the earbud
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`can pair with the smartphone either by directly communicating with the
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`smartphone or indirectly through the charging station’s pairing functionality.
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`APPLE-1060, ¶122. A POSITA would have been motivated to include these
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`features in the system to achieve the benefits of simplification of the process from
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`the perspective of user interaction, but still allowing the earbud to be paired with
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`the smartphone through the case’s pairing functionality. Id. After the earbud is
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`paired and connected with the smartphone, the earbud can receive audio data
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`originated from the smartphone. Id.
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`Additionally, the integration of Lydon’s and Rabu’s features to BT Headset
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`is merely an application of a known technique to a known system to yield
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`predictable results. APPLE-1060, ¶85. “[W]hen a patent ‘simply arranges old
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`elements with each performing the same function it had been known to perform’
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`and yields no more than one would expect from such an arrangement, the
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`combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
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`Here, a POSITA would have recognized that applying Lydon’s and Rabu’s
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`features to BT Headset would have led to predictable results without significantly
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`altering or hindering the functions performed by BT Headset. APPLE-1060, ¶85.
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`Indeed, a POSITA would have had a reasonable expectation of success in
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`implementing the combined system because BT Headset, Lydon, and Rabu
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`describe similar devices, such as a smartphone, earbud, and charging station,
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`developed by the same company, Apple Inc., that include similar elements for
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`performing similar operations. Id. The elements of the combined system would
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`each perform the same function they had been known to perform, e.g., pressing a
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`button on the charging device causes the charging device’s microcontroller to
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`execute control programs stored in memory to initiate processing for the wireless
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`pairing of the earbud and the smartphone. Id.
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`5. Claim 1
`1[p]. A mobile system comprising:
`BT Headset describes a wireless earbud, a “Dual Dock,” and a “Travel
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`Cable.” APPLE-1100, 2-3; APPLE-1101, 1; APPLE-1102, 2; APPLE-1103, 2-3;
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`APPLE-1060, ¶49.
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`wireless
`earbud
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`Travel
`Cable
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`Dual Dock
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`BT Headset
`APPLE-1100, 2
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`wireless
`earbud
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`BT Headset
`APPLE-1100, 3
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`wireless earbud
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`Travel Cable
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`Dual Dock
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`BT Headset, APPLE-1102, 2 (cropped)
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`The User’s Guide discloses that the earbud can be placed in either ear.
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`APPLE-1100, 4. Horwitz describes that the earbud has “a stick-shaped headset
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`body that’s just shy of two inches long” and “under a half-inch wide.” APPLE-
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`1102, 4. Dilger also describes that “[t]his headset is just 2″ long and as thin as a
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`carpenter’s pencil” and “less than a quarter of an ounce.” APPLE-1101, 3-4. Rees
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`describes that “the headsets [sic] built-in rechargeable lithium battery lasts 5.5
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`hours of talk time and up to 72 hours of standby time.” APPLE-1103, 2; APPLE-
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`1100, 7; APPLE-1060, ¶50.
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`Horwitz describes that the “Travel Cable [is] for on-the-go charging.”
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`APPLE-1102, 1; APPLE-1101, 2. Horwitz also describes that the Dual Dock can
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`be moved “to another location.” APPLE-1102, 2; APPLE-1060, ¶51.
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`1[a]. a base station comprising a connection hole, a user input button, at least
`one processor, at least one memory, and circuitry; and
`BT Headset describes that the Dual Dock and Travel Cable includes a
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`connector in a connection hole, as shown in the User’s Guide and Horwitz:
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`wireless
`earbud
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`Travel
`Cable
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`connection
`hole
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`wireless
`earbud
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`BT Headset
`APPLE-1100, 3
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`Dual Dock
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`connection
`hole
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`BT Headset
`APPLE-1100, 2
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`Travel Cable
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`connection
`hole
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`Dual Dock
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`APPLE-1102, 3
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`See also APPLE-1102, 2; APPLE-1103, 3; APPLE-1060, ¶53.
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`The User’s Guide discloses some of the functionality of the Dual Dock and
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`Travel Cable, which confirms that each includes a processor, a memory, and
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`circuitry. APPLE-1060, ¶54. For example, the User’s Guide explains that the
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`Dual Dock charges the wireless earbud, and further confirms that the dock
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`facilitates pairing between an iPhone and the wireless earbud when both are placed
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`in the dock. APPLE-1100, 2; see also APPLE-1101, 1-2; APPLE-1102, 3. That
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`the dock can charge and assist with pairing confirms that the dock includes a
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`processor, a memory for storing instructions executed by the processor, and
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`circuitry including the earbud and iPhone connectors and wiring that electrically
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`connects the connectors to the processor. APPLE-1060, ¶54.
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`The User’s Guide also explains that the Travel Cable charges the wireless
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`earbud and facilitates wireless pairing. APPLE-1100, 3; see also APPLE-1101, 1-
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`2; APPLE-1102, 3. That the Travel Cable can charge and assist with pairing
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`confirms that it includes a processor, a memory for storing instructions executed by
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`the processor, and circuitry including the earbud and iPhone connectors and wiring
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`that electrically connects the connectors to the processor. APPLE-1060, ¶55.
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`BT Headset also describes a user input button on the wireless earbud:
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`APPLE-1100, 4; see also APPLE-1101, 2; APPLE-1102, 4. The User’s Guide
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`explains that the user input button can be used to place the wireless earbud into
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`discoverability mode to assist with pairing. APPLE-1100, 8; APPLE-1060, ¶59.
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`It would have been obvious to place the user input button on the charging
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`station. APPLE-1060, ¶60. A POSITA would have recognized that there were
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`only a finite number of locations for placing a Bluetooth pairing button on the BT
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`Headset system. Id. A POSITA would have recognized that the location of the
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`pairing button is merely a design choice, and it would have been simpler from an
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`engineering and design perspective to put the pairing button on the charging
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`station, because they are larger than the wireless earbud and present less space
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`challenges. Id. Such an implementation would have been straightforward, and
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`would not have required any undue experimentation. Id. Indeed, Bluetooth
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`pairing buttons on an earbud charging station were well-known in the prior art. Id.
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`It also would have been obvious to incorporate the teachings from prior art
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`that includes a user input button on a charging station. APPLE-1060, ¶61. For
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`example, Lydon describes an “intermediate device,” similar to the Dual Dock or
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`Travel Cable, that connects to a host device, e.g., an “iPhoneTM mobile device,”
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`and an accessory, e.g., a wireless headset. APPLE-1007, 3:10-20, 7:29-51, 8:27-
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`9:57, 11:38-54, 23:64-24:3, FIGS. 1A-1B, 9B. As shown in Lydon’s FIG. 1A, the
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`intermediate device 106 includes receptacles 114 and 116 for receiving a host
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`device 102 and an accessory 104. APPLE-1007, 7:29-8:52. The accessory 104
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`may be a wireless headset, stereo headphone, or remote control. Id., 3:10-20.
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`Accordingly, Lydon describes a main body or base station with a connection hole,
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`as illustrated in FIG. 1A:
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`main body/base station
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`connection hole
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`Lydon (APPLE-1007), FIG. 1A
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`
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`Lydon’s intermediate device includes a “controller (e.g., microcontroller)”
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`that “execute[s] one or more control programs… stored in memory (e.g.,
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`programmable read-only memory) integrated with controller.” Id., 10:56-11:3.
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`Attorney Docket No. 39521-0092IP3
`IPR of U.S. Patent No. 10,455,066
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`The controller executes the control programs to perform processing for wireless
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`pairing of the smartphone and headset, including detecting the presence of the
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`smartphone and the headset, communicating with the smartphone and the headset,
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`and forwarding or “tunneling” commands received from one device to the other.
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`Id., 7:14-22, 9:50-57, 11:3-16, 12:42-49, 16:4-17:24, 18:7-9, 18:62-65, 21:34-49;
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`APPLE-1060, ¶62.
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`Lydon further discloses that a user might operate a control on the charging
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`device to establish a wireless pairing. APPLE-1007, 21:34-37, 23:23-33; APPLE-
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`1060, ¶63. Lydon descr