Trials@uspto.gov
`571-272-7822
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`Paper 43
`Date: June 27, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00381
`Patent 10,491,982 B1
`
`
`Before DAVID C. McKONE, GREGG I. ANDERSON, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
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`
`
`571-272-7822
`
`Paper 43
`Date: June 27, 2022
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00381
`Patent 10,491,982 B1
`
`
`Before DAVID C. McKONE, GREGG I. ANDERSON, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2021-00381
`Patent 10,491,982 B1
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`
`I. INTRODUCTION
`Apple, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–5 and 14–20 of U.S. Patent No. 10,491,982 (Ex. 1001,
`“the ’982 patent”). Paper 2 (“Pet.”). Koss Corporation (“Patent Owner”)
`filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Upon our
`authorization, Petitioner filed a Preliminary Reply relating to discretionary
`denial based on the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). Paper 11 (“Prelim.
`Reply”). Patent Owner filed a Preliminary Sur-Reply. Paper 12 (“Prelim.
`Sur-Reply”). We instituted inter partes review on July 2, 2021. Paper 15
`(“Inst. Dec.”). Patent Owner filed a Response (Paper 19, “PO Resp.”),
`Petitioner filed a Reply (Paper 31, “Reply”), and Patent Owner filed a Sur-
`Reply (Paper 34, “Sur-Reply”). A hearing was held on April 5, 2022, and a
`transcript has been made of record. Paper 42 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
`written decision under 35 U.S.C. § 318(a) as to the patentability of claims
`1– 5 and 14–20. Based on the record before us, Petitioner has proved, by a
`preponderance of the evidence, that claims 1–5 and 14–18 are unpatentable,
`but has not proved that claims 19 and 20 are unpatentable.
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner states it is the real party-in-interest. Pet. 85. Patent Owner
`states it is the real party-in-interest. Paper 4 (“Mandatory Notice by Patent
`Owner”), 1; see also Papers 6–9 (Updates to Mandatory Notice).
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`B. Related Matters
`Both parties list a related lawsuit alleging infringement of the ’982
`patent, Koss Corporation v. Apple Inc., Case No. 6:20-cv-00665 (W.D.
`Tex.) ( “District Court Lawsuit”). Pet. 86. Patent Owner lists the District
`Court Lawsuit and other lawsuits involving the ’982 patent, United States
`applications to which the ’982 patent claims priority, and pending inter
`partes reviews as Related Matters. Paper 9, 1–2.
`1. Other Lawsuits
`Patent Owner identifies five other lawsuits involving the ’982 patent:
`Koss Corporation v. PEAG LLC d/b/a JLab Audio, Case No. 6:20-cv-00662
`(W.D. Tex.); Koss Corporation v. Skullcandy, Inc., Case No. 6:20-cv-00664
`(W.D. Tex); Apple Inc. v. Koss Corporation, Case No. 4:20-cv-05504 (N.D.
`Cal.); Koss Corporation v. Apple Inc., Case No. 6-20-cv-00665 (W.D.
`Tex.); and Koss Corporation v. Skullcandy, Inc., Case No. 2:21-cv-00203
`(D. Utah). Paper 9, 1.
`2. United States Applications
`Patent Owner lists the following as Related Applications to which the
`’982 patent claims priority: PCT application No. PCT/US2009/039754,
`filed April 7, 2009 (the “PCT Application”) and provisional application
`Serial No. 61/123,265, filed April 8, 2008 (the “Provisional Application”).
`Paper 9, 1.
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`3. Inter Partes Review Proceedings
`Patent Owner lists the following inter partes review proceedings1
`challenging patents that claim priority to the PCT Application and the
`Provisional Application:
`Bose Corporation v. Koss Corporation, IPR2021-00297, filed
`December 7, 2020, challenging US Patent 10,368,155 B2;
`Apple Inc. v. Koss Corporation, IPR2021-00305, filed December 15,
`2020, challenging US Patent 10,506,325 B1;
`Apple Inc. v. Koss Corporation, IPR2021-00546, filed February 22,
`2021, challenging US Patent 10,206,025 B2;
` Apple Inc. v. Koss Corporation, IPR2021-00592, filed March 2,
`2021, challenging US Patent 10,469,934 B2;
`Apple Inc. v. Koss Corporation, IPR2021-00612, filed March 3,
`2021, challenging U.S. Patent 10,206,025;
`Apple Inc. v. Koss Corporation, IPR2021-00626, filed March 17,
`2021, challenging US Patent 10,206,025 B2;
`Bose Corporation v. Koss Corporation, IPR2021-00680, filed March
`17, 2021, challenging US Patent 10,469,934 B2;
`Apple Inc. v. Koss Corporation, IPR2021-00679, filed March 22,
`2021, challenging US Patent 10,506,325 B1; and
`
`
`1 Apple Inc. v. Koss Corporation, IPR2021-00255, filed November 25,
`2020, and Apple Inc. v. Koss Corporation, IPR2021-00600, filed March 7,
`2021, both challenging US Patent 10,298,451 B1, and Apple Inc. v. Koss
`Corporation, IPR2021-00686, filed March 22, 2021, challenging US Patent
`10,491,982 B1, are also pending inter partes reviews between these same
`parties.
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`Apple Inc. v. Koss Corporation, IPR2021-00693, filed March 23,
`2021, challenging US Patent 10,469,934 B2.
`Paper 9. 1–2.
`
`C. The ’982 Patent
`The application for the ’982 patent’s earliest priority dates are April
`7, 2009, to the PCT Application and April 8, 20082, to the Provisional
`Application. Ex. 1001, codes (60), (63). See Section II.B.2 above.
`1. Background Technology
`The ’982 patent explains that wired headphones interconnecting
`headphones and a data storage unit are “cumbersome.” Ex. 1001, 1:56–59.
`“Recently, cordless headphones that connect wirelessly via IEEE 802.11 to
`a WLAN-ready laptop or personal computer (PC) have been proposed, but
`“such headphones are also quite large and not in-ear type phones.” Id. at
`1:66–2:4.
`
`2. The ’982 Patent’s Wireless Earphones
`The ’982 patent describes and claims “a wireless earphone that
`receives streaming audio data via ad hoc wireless networks and
`infrastructure wireless networks, and that transitions seamlessly between
`wireless networks.” Ex. 1001, 2:64–66. “[T]he earphone may transition
`automatically from an ad hoc wireless network to an infrastructure wireless
`network, without user intervention.” Id. at 3:8–11. The ’982 patent defines
`“ad hoc wireless network” as “a network where two . . . wireless-capable
`devices, such as the earphone and a data source, communicate directly and
`wirelessly, without using an access point.” Id. at 3:8–14. The ’982 patent
`defines “infrastructure wireless network” as “a wireless network that uses
`
`
`2 The priority date is not in dispute. See Pet. 2.
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`one or more access points to allow a wireless-capable device, such as the
`wireless earphone, to connect to a computer network, such as a LAN or
`WAN (including the Internet).” Id. at 3:14–19.
`Two discrete wireless earphones are described, each having a body
`and an “ear canal portion for insertion into the canal of the user of the
`earphone.” Id. at 3:25–27, 3:54–56. Figure 2A of the ’982 patent is
`reproduced below.
`
`
`
`Figure 2A illustrates one of the communication modes for the wireless
`earphone.
`
`Ex. 1001, 2:36–38. Figure 2A illustrates a wireless network adapter 22
`connected to a data source 20 in communication with earphone 10 over ad
`hoc wireless network 24. Id. at 4:33–37. The earphone has a transceiver
`circuit to communicate wirelessly with a data source. Id. at 4:35–37. The
`data source may be a digital audio player (DAP). Id. at 4:39–40. The DAP
`transmits audio wirelessly to earphone(s) via an ad hoc network if the DAP
`and earphone(s) are “in range” of that network. Id. at 4:63–65. “When in
`range, the data source 20 may communicate with the earphone 10 via the ad
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`hoc wireless network 24 using any suitable wireless communication
`protocol, including Wi-Fi (e.g., IEEE 802.lla/b/g/n), WiMAX (IEEE
`802.16), Bluetooth” and other communication protocols. Id. at 4:63–5:1.
`Figure 2B of the ’982 patent is reproduced below.
`
`
`Figure 2B illustrates another of the communication modes for the
`wireless earphone.
`
`
`Ex. 1001, 2:36–38. The data source and wireless network adapter may
`transmit digital audio wirelessly through an access point 32 over “an
`infrastructure wireless network (such as a wireless LAN (WLAN) 30”. Id.
`at 4:34–40. “[T]he wireless network adapter 22 may comprise a wireless
`network interface card (WNIC) or other suitable transceiver that plugs into
`a USB port or other port or jack of the data source 20 (such as a TRS
`connector) to stream data, e.g., digital audio files, via a wireless network
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`(e.g., the ad hoc wireless network 24 or an infrastructure wireless
`network).” Id. at 4:50–56.
`
`D. Illustrative Claim
`Claims 1–5 and 14–20 of the ’982 patent are challenged. Pet. 1–2,
`18–85. Claim 1 is the only independent claim challenged. Claims 2–5 and
`14–20 depend directly or indirectly from claim 1. All claims are directed to
`a “system.” Claim 1 is reproduced below as illustrative.
`[1.P]3 1. A system comprising:
`
`[1.a] headphones comprising a pair of first and second wireless
`earphones to be worn simultaneously by a user,
`
`
`[1.b] wherein the first and second earphones are separate such
`that when the headphones are worn by the user, the first
`and second earphones are not physically connected,
`
`
`[1.c] wherein each of the first and second earphones
`comprises:
`
`[1.c.i]
`
`
`a body portion that comprises:
`
`for
`[1.c.i.A] a wireless communication circuit
`receiving and transmitting wireless signals;
`
`
`[1.c.i.B] a processor circuit in communication with
`the wireless communication circuit; and
`
`[1.c.i.C] an ear canal portion that is inserted into an
`ear of the user when worn by the user; and
`
`
`
`3 For purposes of this Decision, we follow Petitioner’s format where each
`claim is identified by claim number followed by a letter or combination of
`letters and Roman numerals for each limitation. See Pet. 32–53 (limitations
`1.P– 1.d).
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`[1.c.ii]
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`[1.c.i.D] at least one acoustic transducer connected to
`the processor circuit; and
`
`an elongated portion4 that extends away from
`the body portion such that the elongated portion
`extends downwardly when the ear canal portion
`is inserted in the ear of the user;
`
`
`[1.c.iii] a microphone connected to the processor circuit
`and for picking up utterances of a user of the
`headphones;
`
`
`[1.c.iv] an antenna connected
`communication circuit; and
`
`to
`
`the wireless
`
`
`[1.c.v]
`
`[1.d] a mobile, digital audio player that stores digital audio
`content and that comprises a wireless transceiver for
`transmitting digital audio content to the headphones via
`Bluetooth wireless communication links, such that each
`earphone receives and plays audio content received
`wirelessly via the Bluetooth wireless communication links
`from the mobile, digital audio player.
`
`a rechargeable power source; and
`
`
`Ex. 1001, 18:8–40.
`
`E. Evidence of Record
`This proceeding relies on the following prior art references and
`expert testimony:
`Rosener, US 2008/0076489 A1, published Mar. 27, 2008 (Ex.
`1004);
`
`
`4 This limitation recites “elongated portion,” which does not appear in the
`Specification.
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`Hankey, US 2008/166001 A1, published July 10, 2008 (Ex.
`1005);
`Dyer, US 8,031,900 B2, issued Oct. 4, 2001 (Ex. 1006);
`Huddart, US 7,627,289 B2, issued Dec. 1, 2009 (Ex. 1007);
`Hankey Provisional,5 US 60/879,177, filed Jan. 6, 2007 (Ex.
`1008);
`Price, US 2006/0026304 A1, published Feb. 2, 2006 (Ex.
`1009);
`Paulson, US 7,551,940 B2, issued June 23, 2009 (Ex. 1010);
`Marek, US 5,371,454, issued Dec. 6, 1994 (Ex. 1011);
`Vanderelli, US 7,027,311 B2, issued Apr. 11, 2006 (Ex. 1012);
`
`and
`
`Haupt, EP 2006/042749 A2, issued Apr. 27, 2006 (Ex. 1020,
`including English translation).
`Petitioner also relies on the Declaration of Dr. Jeremy Cooperstock
`(Ex. 1003, “Cooperstock Declaration”) and the Supplemental Declaration
`of Dr. Jeremy Cooperstock (Ex. 1024, “Cooperstock Supplemental
`Declaration”).
`Patent Owner relies on the Declaration of Joseph C. McAlexander III
`(Ex. 2038, “McAlexander Declaration”) and the Declaration of Nicholas S.
`Blair (Ex. 2039, “Blair Declaration”).
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–5 and 14–20 would have been
`unpatentable on the following grounds (Pet. 1–2, 18–85):
`
`
`5 Hankey Provisional is a US provisional application related to Hankey.
`See Ex. 1005 code (60).
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`Claim(s)
`Challenged
`1, 2, 18–20
`
`3–5
`
`14
`
`15
`
`16–17
`
`17
`
`
`
`35 U.S.C. §6
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`Reference(s)/Basis
`Rosener, Hankey or Rosener,
`Hankey, Dyer
`Rosener, Hankey, Haupt or Rosener,
`Hankey, Dyer, Haupt
`Rosener, Hankey, Price or Rosener,
`Hankey, Dyer, Price
`Rosener, Hankey, Paulson or
`Rosener, Hankey, Dyer, Paulson
`Rosener, Hankey, Huddart or
`Rosener, Hankey, Dyer, Huddart
`Rosener, Hankey, Huddart,
`Vanderelli or Rosener, Hankey,
`Dyer, Huddart, Vanderelli
`
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner’s expert Dr. Cooperstock, testifies that, based on his
`experience and the references used to challenge the ’982 patent, a person of
`ordinary skill in the art at the time of the critical date for the ’982 patent
`would have had at least a Bachelor’s Degree in an academic area
`emphasizing electrical engineering, computer science, or a
`similar discipline, and at least two years of experience in wireless
`communications across short distance or local area networks.
`Superior education could compensate for a deficiency in work
`experience, and vice-versa.
`
`
`6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the application that resulted in the ’982 patent
`has an effective filing date before this date, the pre-AIA versions of §§ 102
`and 103 apply.
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`Ex. 1003 ¶ 30. This level of skill was adopted in the Institution Decision.
`Inst. Dec. 33. Patent Owner agrees we “should maintain this standard for
`the proceeding as Patent Owner agrees that it is an appropriate standard.”
`PO Resp. 5–6 (citing Ex. 2038 ¶ 20). At the Final Hearing, all parties
`agreed the above level of skill is the correct one for this proceeding. Tr.
`73:1–74:13.
`Dr. Cooperstock’s proposal is consistent with the level of ordinary
`skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed.
`Cir. 1995). As per the agreement of the parties, including their experts, and
`consistent with the prior art, we adopt the above level of ordinary skill for
`this Decision.
`
`B. Claim Construction
`The Petition was accorded a filing date of January 4, 2021. Paper 5.
`For petitions filed on or after November 13, 2018, a claim shall be
`construed using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. § 282(b), including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent. 37 C.F.R. § 42.100 (2019).
`Thus, we apply the claim construction standard as set forth in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`Petitioner cites 37 C.F.R. § 42.100, asserts construction is
`unnecessary, and does not propose any term for express construction in the
`claim construction section of the Petition. Pet. 18. Notwithstanding the
`preceding, Petitioner raises a construction issue with respect to claim 17’s
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`recitation of “passive, wireless rechargeable power source.” Pet. 80–81.
`We preliminarily agreed with Petitioner’s proposed construction and
`determined that a “passive” power source 102 “may comprise capacitors
`passively charged with RF radiation.” Inst. Dec. 34 (citing Pet. 80–81
`(quoting Ex. 1001, 7:7–9)7). Patent Owner does not dispute our preliminary
`construction or identify any other claim term for express construction. See
`generally PO Resp.
`The papers filed since institution do not raise a dispute regarding
`“passive, wireless rechargeable power source.” For completeness of the
`record, we maintain our preliminary construction of “passive, wireless
`rechargeable power source.” We also determine construction is
`unnecessary for any other claim term in order to resolve the dispute. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”). On all other
`claim terms we proceeded based on the plain and ordinary meaning as
`understood by a person of ordinary skill in the art. Inst. Dec. 34.
`C. Legal Standard for Obviousness
`A patent claim is invalid as obvious if the differences between the
`claimed subject matter and the prior art are “such that the subject matter as
`a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter
`pertains.” 35 U.S.C. § 103(a).
`The ultimate determination of obviousness is a question of law,
`but
`that determination
`is based on underlying factual
`
`7 The Cooperstock Declaration does not provide a construction for any
`claim term. See Ex. 1003 ¶ 29.
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`findings. . . . The underlying factual findings include (1) “the
`scope and content of the prior art,” (2) “differences between the
`prior art and the claims at issue,” (3) “the level of ordinary skill
`in the pertinent art,” and (4) the presence of secondary
`considerations of nonobviousness such “as commercial success,
`long felt but unsolved needs, failure of others,” and unexpected
`results.
`
`In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (citing inter alia,
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
`“To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
`Board must consider whether a person of ordinary skill would have been
`motivated to combine the prior art to achieve the claimed invention.
`Nuvasive, 842 F.3d at 1381.
`As the Federal Circuit found, in quoting from the Supreme Court’s
`decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–419 (2007),
`because inventions in most, if not all, instances rely upon
`building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in some sense,
`is already known,” “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant
`field to combine the elements in the way the claimed new
`invention does.”
`
`Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991–92
`(Fed. Cir. 2017).
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`D. Obviousness of Claims 1–2 and 18–20 over Rosener and Hankey or
`Rosener, Hankey, and Dyer8
` Petitioner alleges claims 1–2 and 18–20 would have been obvious
`over Rosener and Hankey or Rosener, Hankey, and Dyer. Pet. 1, 18–58.
`Petitioner also relies on the Cooperstock Declaration. Ex. 1003 ¶¶ 16–57,
`59–91.
`
`1. Rosener (Ex. 1004)
`Rosener relates to wireless communication between an external data
`or audio device, like a cell phone or PDA, MP3 or CD player, radio
`personal computer or game console, and first and second earphones. Ex.
`1004 ¶¶ 1, 30. Rosener explains that conventional wireless earphones came
`in different designs, each with “its own unique benefits and drawbacks.”
`Id. ¶¶ 5–10, Figs. 2–4. Rosener focuses on wireless “earbuds.” Id. at Abs.,
`¶¶ 11, 30, Fig. 5.
`Each earbud is designed to fit into the concha of the pinna of the
`user’s ear, and includes a housing containing a speaker, a radio-frequency
`(RF) transceiver, and a battery. Ex. 1004 ¶ 30. The transceiver of each is
`“configured to receive data signals over one or more single-access wireless
`links or over a multi-access wireless link.” Id. ¶ 11. The Bluetooth
`industrial specification (IEEE 802.15.1 standard) is one communication
`protocol disclosed that allows each of the earphones to communicate with
`the external data or audio data devices. Id. ¶¶ 4, 35.
`
`
`8 We have analyzed commercial success for all challenges. See Section
`III.J below.
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`Figure 9, reproduced below, illustrates some of the components of
`Rosener’s headphones:
`
`
`Figure 9 is a block diagram of an RF transceiver.
`Ex. 1004 ¶¶ 24, 49. As shown above, RF transceiver 900 includes RF
`transmitter portion 902, RF receiver portion 904, antenna 906, and duplexer
`908. Id. ¶ 49. A/D converter 910 receives analog baseband signals from
`RF transceiver portion 904, digitizes the signals, and sends them to
`baseband processor 914, which, along with signal conditioning circuit 916,
`processes the signals into a form suitable to drive data sink (speaker) 918.
`Id. Baseband processor 914 receives data from data source 922 (e.g., a
`microphone) via signal conditioning circuit 920 and provides the data to RF
`transmitter portion 902 for transmission via antenna 906. Id. 1650.
`
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`2. Hankey9 (Ex. 1005)
`Hankey describes a headset within “a small compact unit.” Ex. 1005
`¶¶ 93, 103. The techniques disclosed in Hankey include integrating
`electronic components/assemblies (e.g., speaker, antenna) into the limited
`volume of a small headset, by dividing the headset’s electronic
`components/assemblies “into small multiple [groups of] components that
`can be positioned at different locations (discretely) within the headset.” Id.
`¶ 98. Similarly, “electronic assemblies that are partially flexible or
`bendable such that the assemblies can be folded into a small compact form
`in order to fit inside tightly spaced internal volumes.” Id. ¶ 99.
`Hankey divides the headset’s electronic components/assemblies
`between the earbud and the primary housing. Ex. 1005 ¶¶ 130–131. For
`example, the processor and speaker may be placed inside the earbud while
`the microphone “can be electrically coupled to primary housing flexible
`circuit board.” Id. ¶ 131.
`Figures 10A and 10B of Hankey are reproduced below.
`
`
`9 In describing Hankey, Petitioner also cites to Ex. 1008, the Hankey
`Provisional. Pet. 21; Ex. 1005, code (60); Section II.E above. Petitioner
`cites to the Hankey Provisional to prove “Hankey is entitled to the benefit
`of its provisional filing date, i.e., the January 6, 2007 filing date.” Pet. 3
`(quoting Ex. 1003 ¶ 43; citing Ex. 1008 ¶¶ 89–90, 208–212, Figs 1A, 40A,
`41–44). We cite only to Hankey, not the Hankey Provisional. Patent
`Owner does not dispute that Hankey is prior art and we find the filing date
`of the Hankey Provisional is the priority date for Hankey.
`
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`Figures l0A and 10B are perspective views of Hankey’s headset.
`Ex. 1005 ¶ 143. Figure 10A shows headset 1000 for enclosing “electronic
`and other elements of the headset.” Id. ¶ 144. The headset “can include
`earbud 1020, neck 1030, primary housing 1010, antenna cap 1011 and
`connector 1040.” Id. “Earbud 1020 can include perforations (e.g., acoustic
`ports) 1021 and 1022 for allowing air to pass into and out of the earbud
`1020.” Id. “Front port 1021 can allow sound waves from a receiver located
`in earbud 1020 to reach a user’s ear and/or the outside environment.” Id.
`Button 1012 can control the headset. Id. ¶ 145.
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`3. Dyer (Ex. 1006)
`Dyer describes a “canalphone” type including an eartip that fits
`within a user’s ear canal. Ex. 1006, 3:4–6, 4:37–39, Fig. 1. The eartip is
`“attachable to a standard generic earphone.” Id. at 1:10–11, 2:21–24.
`Dyer’s Figure 1 is reproduced below.
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`
`Figure 1 is a cross-sectional view of a generic earphone in
`accordance with the prior art.
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`Ex. 1006, 2:48–49. Figure 1 illustrates an example of “canalphone” 100
`that includes a sound delivery member 111 with an eartip 121 attached to an
`end portion of it. Id. at 3:4–6, 3:26–28, 4:4–14. Sound delivery member
`111 is attached to earphone enclosure 115 that protects “any required
`earphone circuitry” of canalphone 100 from damage. Id. at 3:57–66.
`Intermediary member 111 includes a sound delivery tube 113 that delivers
`audio from circuitries in enclosure 115 to eartip 121. Id. at 3:22–25.
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`4. Claim 1
`Patent Owner disputes that a person of ordinary skill, as determined
`above in Section III.A, would have had sufficient skill to combine Rosener
`and Hankey with a reasonable expectation of success. PO Resp. 12–21.
`Patent Owner disputes the reasons for combining Rosener, Hankey, and
`Dyer. Id. at 34–40. Patent Owner also disputes that the Rosener and
`Hankey or Rosener, Hankey, and Dyer combinations teach two wireless
`earphones, each having a microphone. Id. at 21–34.
`a. Rosener and Hankey Reasons for the Combination and Expectation of
`Success
`Petitioner’s reasons for combining Rosener and Hankey start with
`Rosener’s teaching of “providing ‘high-quality stereo,’ i.e., binaural,
`functionality.” Pet. 24 (citing Ex. 1004 ¶¶ 30, 3–8, Fig. 5; Ex. 1003 ¶ 44).
`Petitioner relies on Rosener as teaching two “earpieces/earphones” 502 and
`504 in wireless communication with an “audio source.” Id. at 25 (citing Ex.
`1004, Fig. 5; see also id. ¶ 30 (describing Fig. 5)). Petitioner relies on
`Hankey for details of the form factor for the earphones 502 and 505, thus
`implementing the combination of Rosener’s earphones and Hankey’s
`“small compact earpiece[s].”10 Pet. 25–27 (citing Ex. 1003 ¶¶ 45, 47).
`Petitioner argues “Hankey considers the size and weight of prior art
`headsets as a ‘key issue’ that causes an uncomfortable fit of the headsets on
`a user’s ear.” Id. at 26 (citing Ex. 1005 ¶ 11; Ex. 100811 ¶ 3). Petitioner
`
`
`10 Hankey uses the term “headset” but Petitioner uses “earpiece” for
`“consistency and to avoid confusion.” See Pet. 24, n.6. We find that
`convention reasonable and adopt it here.
`11 Sanford, US Provisional Application No. 60/879,177, filed Jan. 6, 2007
`(Ex. 1008). Provisional application for Hankey. See Ex. 1005 code (60).
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`argues that “Hankey discloses a compact earpiece capable of
`communicating with external audio devices wirelessly.” Id. (citing Pet. 22–
`23 (describing Hankey)).
`Petitioner argues Hankey “provides techniques to package electronics
`within ‘a small compact unit’ to alleviate the size and shape hassles of
`conventional headsets.” Pet. 26 (citing Ex. 1005 ¶¶ 92–98; Ex. 1008 ¶¶ 93,
`144–150). Petitioner alleges a person of ordinary skill in the art would have
`been motivated to arrange the components of Hankey in a “small, compact
`form factor” as shown in Figure 5 of Rosener. Id. (citing Ex. 1003 ¶ 46).
`Petitioner provides a side-by-side comparison of Rosener’s Figure 5 as
`compared to Hankey’s Figure 10A, which is reproduced below.
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`Petitioners compare shows Rosener’s Figure 5 on the left and
`Hankey’s Figure 10A on the right.
`
`Pet. 27. Petitioner alleges a person of ordinary skill in the art “would have
`recognized the similarities between the earpieces shown in Hankey’s FIGs.
`5 or 10A and earphones 502, 504 shown in Rosener’s FIG. 5, and would
`have been motivated to use Hankey’s component arrangement techniques to
`implement internal components and external features of earphones 502,
`504.” Id. at 27–28 (citing Ex. 1003 ¶ 48).
`Petitioner alleges Rosener’s earphones 502, 504 are “physically and
`electrically” separate and a person of ordinary skill in the art “would have
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`recognized that Hankey’s techniques are readily applicable to Rosener’s
`earphones 502, 504.” Pet. 28 (citing Ex. 1004 ¶ 30). Dr. Cooperstock is
`relied on for his testimony that latency compensation processing would
`“enable stereo play when both earphones are being simultaneously used.”
`Id. at 28–29 (citing Ex. 1004 ¶¶ 11, 39–42; Ex. 1003 ¶ 49).
`We find that Petitioner has shown sufficiently that a person of
`ordinary skill in the art would have had reason to combine Hankey’s “small
`form factors” with Rosener’s earphones. Pet. 25–29. Patent Owner argues
`stereo input by the microphones to the earphones is an insufficient reason
`for the combination and the Cooperstock Deposition testimony supporting it
`is speculative. PO Resp. 32 (citing Ex. 2037, 104:12–18). Mr.
`McAlexander testifies Rosener is intended for “communication purposes”
`and not music. Ex. 2038 ¶ 71. Mr. McAlexander testifies that Rosener and
`Hankey would be for communication and not “capturing high-quality,
`stereo audio recordings.” Ex. 2038 ¶ 71; see also PO Resp. 32–33 (making
`same argument).
`Patent Owner also argues a second microphone (see Section III.D.4.c
`below, analyzing the “microphone limitation”) would “add significant
`complexity” to the combination. PO Resp. 33 (citing Ex. 2038 ¶ 73). The
`argument is based on the earphones being physically spaced apart, along
`with the associated microphone, resulting in different signal strengths. Id.
`at 34 (citing Ex. 2038 ¶ 74). Thus, there is a need to determine which
`signal is stronger for communication with the external device. Id. at 33–34
`(citing Ex. 2038 ¶ 74). According to Patent Owner, the need to
`accommodate the difference in signal strength requires additional signal
`processing and complexity. Id. at 34 (citing Ex. 2038 ¶ 74). Patent Owner
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`concludes by arguing a person of ordinary skill in the art “would not modify
`the Rosener-Hankey combination (or Rosener-Hankey-Dyer combination)
`to include a microphone in each earphone.” Id. (emphasis omitted).
`We adopt as our findings Petitioner’s argument and evidence
`summarized above. We find that the addition of stereo audio reception is a
`reason to combine Hankey with Rosener. Rosener discloses “high quality
`stereo sound” with two separate earpieces/earphones. Ex. 1004 ¶¶ 10–11
`(“left-ear and right-ear circum-aural over-the-ear headphones, stereo
`speakers, speakers for a surround sound system, etc.”). “[H]igh-quality
`stereo sound” is an advantage over the prior art in “allowing each of the two
`earpieces/earphones to be ‘physically and electrically separated’ from the
`other.” Ex. 1003 ¶ 44 n.2 (citing Ex. 1004 ¶¶ 10–11).
`The McAlexander testimony that Rosener’s microphone would be
`understood by a person of ordinary skill in the art as intended “exclusively
`for communication purposes,” and not “stereo audio recordings,” is not
`persuasive. Ex. 2038 ¶ 71. Why the alleged distinction makes a difference
`is not explained. The ’982 patent does not discuss the difference in the
`context of the written description nor is it part of any claim. Indeed, Mr.
`McAlexander points to recent smartphone products, not the ’982 patent, for
`their teachings of “using multiple microphones.” Id. (examples including
`Apple XSW and XR).
`In connection with the challenge to claim 1 based on Rosener and
`Hankey or Rosener, Hankey, and Dyer (this combination is analyzed in
`Section III.D.4.b below), Patent Owner makes several arguments that a
`person of ordinary skill would not have a level of skill sufficient to combine
`the references as Petitioner proposes. P
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