UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD - PATENT OWNER RESPONSE - APPLE INC., KOSS CORPORATION ...
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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.
_____________________
Case IPR2021-00255
Patent 10,298,451
_____________________
PATENT OWNER RESPONSE
504204022.7Case IPR2021-00255
Patent Owner Response
TABLE OF CONTENTS
Page
I. INTRODUCTION ..........................................................................................1
II. BACKGROUND ............................................................................................2
A. Summary of the ’451 Patent .................................................................2
B. Person of Ordinary Skill in the Art ......................................................6
C. Petitioner’s Invalidity Grounds and Evidence .....................................7
1. Brown .......................................................................................10
2. Scherzer ....................................................................................12
3. Cooperstock’s Testimony ........................................................17
III. THE CHALLENGED CLAIMS WOULD NOT HAVE BEEN
OBVIOUS.....................................................................................................18
A. The Brown-Scherzer Combination ....................................................18
B. Relevant Issues for Obviousness Determination................................23
C. A POSITA Would Not Attempt To Use Scherzer’s Access
Credentials With an Unregistered Device ..........................................24
1. Transmission and Use of Scherzer’s Access Credentials By
an Unregistered Device Ignores the Account Acceptability
Requirement and Associated Tracking in Scherzer .................25
2. Scherzer, As a Whole, Discourages Unfettered
Dissemination of Access Credentials to Unregistered
Devices .....................................................................................29
3. A Simpler Approach to Network Connectivity Exists ............ 30
B. The Petition’s Obviousness Analysis Relies on Impermissible
Hindsight Reconstruction ...................................................................30
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Patent Owner Response
1. Defects In The Petition’s First Example ..................................31
2. Defects in the Petition’s Second Example ...............................34
3. Defects in Cooperstock’s Testimony .......................................36
C. The Petition’s Flawed Analysis Obscures Any Comparison of
Brown and Scherzer to the Challenged Claims .................................38
IV. OBJECTIVE INDICIA OF NONOBVIOUSNESS CONFIRM THAT
THE CHALLENGED CLAIMS ARE PATENTABLE ..............................40
A. Background ........................................................................................40
B. Legal Principles ..................................................................................41
C. There is a Nexus Between the HomePods and the Claims of ’451
Patent ..................................................................................................42
D. There is Evidence that the HomePod and HomePod Mini Have
Achieved Commercial Success Since their Debut .............................44
V. CONCLUSION.............................................................................................45
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Patent Owner’s Preliminary Response
TABLE OF AUTHORITIES
Page(s)
Cases
Ecolochem, Inc. v. S. Cal. Edison Co.,
227 F.3d 1361 (Fed. Cir. 2000) .......................................................................... 41
Fox Factory, Inc. v. SRAM, LLC,
944 F.3d 1366 (Fed. Cir. 2019) ..............................................................42, 43, 44
Graham v John Deere Co.,
383 U.S. 1 (1966) .........................................................................................passim
In re Keller,
642 F.2d 413 (C.C.P.A. 1981) ............................................................................ 24
Merck & Co., Inc. v. Teva Pharm. USA, Inc.,
395 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 41
Mintz v. Dietz & Watson, Inc.,
679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 39
Nautilus Hyosung Inc. v. Diebold, Inc.,
IPR2016-00633, Paper 9 (PTAB Aug. 22, 2016) ............................................... 36
In re NTP, Inc.,
654 F.3d 1279 (Fed. Cir. 2011) ................................................................9, 34, 38
In re Schweickert,
676 F. App’x. 988 (Fed. Cir. 2017) .................................................................... 34
SightSound Techs., LLC v. Apple Inc.,
809 F.3d 1307 (Fed. Cir. 2015) .................................................................... 41, 43
W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983) ................................................ 38
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Patent Owner’s Preliminary Response
EXHIBIT LISTING
EXHIBIT NO. DESCRIPTION
KOSS-2001 Sample Order Governing Proceedings - Patent Case, November
5, 2020, Judge Albright, United States District Court for the
Western District of Texas, Waco Division
KOSS-2002 Markman Hearing, MV3 Partners, LLC v. Roku, Inc., Case No.
W-18-cv-308, Dkt. No. 83 (W. D. Tex. July 19, 2019)
KOSS-2003 E. Cunningham et al., “Fauci predicts vaccine ‘open season’ by
April,” Washington Post, Feb. 11, 2021
(www.washingtonpost.com/nation/2021/02/11/coronavirus-
covid-live-updates-us/) (last accessed February 25, 2021)
KOSS-2004 Docket Report, Koss Corp. v. Apple Inc., Case No. 6:20-cv-
00665-ADA (W.D. Tex.) (as of March 2, 2021)
KOSS-2005 Complaint, Apple Inc. v. Koss Corporation, Case No. 5:20-cv-
05504, Dkt. No. 1 (N.D. Cal. Aug. 7, 2020)
KOSS-2006 Notice of Trial Procedures, VLSI Tech. LLC v. Intel Corp., Case
No. 6:21-cv-00057-ADA, Dkt. No. 421 (W.D. Tex. February 10,
2021)
KOSS-2007 R. Thebault, “Fauci says U.S. vaccinations to increase in spring
as Biden administration nears dose goal,” Washington Post, Feb.
7, 2021
(www.washingtonpost.com/health/2021/02/07/fauci-
vaccination-increase/) (last accessed February 25, 2021)
KOSS-2008 K. Buehler, “WDTX Judge Albright Touts Revamped
Courtroom Tech,” IPLAW360, February 26, 2021.
KOSS-2009 Email dated March 8, 2021 from Michael Pieja to Darlene
Ghavimi, including attachment that is letter dated March 6, 2021
Michael Pieja to Darlene Ghavimi
KOSS-2010 Claim Construction Order, Koss Corp. v. Apple, Inc., Case No.
6-20-cv-00665-ADA, Dkt. 83 (W.D. Tex. June 2, 2021)
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Patent Owner’s Preliminary Response
EXHIBIT NO. DESCRIPTION
KOSS-2011 Order Denying Defendant’s Motion to Transfer, Koss Corp. v.
Apple, Inc., Case No. 6-20-cv-00665-ADA, Dkt. 76 (W.D. Tex.
April 22, 2021)
KOSS-2012 Order Granting Motion to Transfer, Apple Inc. v. Koss Corp.,
Case No. 4:20-cv-05504, Dkt. 72 (May 12, 2021)
KOSS-2013 Joint Motion to Consolidate Cases, Koss Corp. v. Apple, Inc.,
Case No. 6-20-cv-00665-ADA, Dkt. 84 (W.D. Tex. June 8,
2021)
KOSS-2014 Exhibit 1003 (Declaration of J. Cooperstock) in IPR2021-
00305
KOSS-2015 Transcript, Deposition of J. Cooperstock, July 28, 2021,
IPR2021-00255
KOSS-2016 Press release, June 5, 2017, “HomePod reinvents music in the
home” (www.apple.com/newsroom/2017/06/homepod-
reinvents-music-in-the-home/) (accessed August 18, 2021)
KOSS-2017 Press release, October 13, 2020, “Apple introduces HomePod
mini: A powerful smart speaker with amazing sound”
(www.apple.com/newsroom/2020/10/apple-introduces-
homepod-mini-a-powerful-smart-speaker-with-amazing-
sound/) (accessed August 18, 2021)
KOSS-2018 G. Rambo, “HomePod set up similar to AirPods, requires
iCloud Keychain & two-factor auth,” Jan. 24, 2018
(9to5mac.com/2018/01/24/homepod-setup-process/) (accessed
August 18, 2021)
KOSS-2019 D. Phelan, “Apple Just Cut the Price of HomePod Around the
World,” April 4, 2019
(www.forbes.com/sites/davidphelan/2019/04/04/apple-just-cut-
homepod-price-significantly-around-the-world-
permanently/?sh=7182caea37c7) (accessed August 18, 2021)
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Patent Owner’s Preliminary Response
EXHIBIT NO. DESCRIPTION
KOSS-2020 D. Curry, “Apple Statistics (2021),” updated August 16, 2021
(https://www.businessofapps.com/data/apple-statistics/)
(accessed August 18, 2021)
KOSS-2021 Apple Inc., Form 10-K, fiscal year ended Sept. 26, 2020
KOSS-2022 Declaration by Joseph C. McAlexander III
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Patent Owner Response
I. INTRODUCTION
The Board granted institution for inter partes review of claims 1-21
(“Challenged Claims”) of U.S. Patent No. 10,298,451 (APPLE-1001, “the ’451
Patent”). Paper 22. Patent Owner, Koss Corporation, submits this Patent Owner
Response (“POR”) under 37 C.F.R. § 42.120.
Claims 1 and 18 are the independent claims of the ’451 Patent. These claims
recite an electronic device, such as an acoustic speaker, that receives “credential
data” for an infrastructure wireless network from a mobile computer device. The
credential data, which can comprise an identifier for the infrastructure wireless
network and which are also stored on “one or more host servers,” are transmitted by
the mobile computer device to the electronic device via an “ad hoc communication
link.” Upon receiving credential data, the electronic device can connect to the
infrastructure wireless network. APPLE-1001, 8:30-53 (claim 1), 10:1-24 (claim
18). That way, the electronic device can connect to the infrastructure wireless
network without having to physically plug the electronic device into a computer to
receive the infrastructure wireless network credentials. Id., 2:3-7.
Petitioner asserts that independent claims 1 and 18 would have been obvious
over Brown (APPLE-1004) and Scherzer (APPLE-1005). Petitioner’s argument,
however, ignores important teachings of its relied-upon references. In particular, as
explained below and in the accompanying declaration of Patent Owner’s expert,
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Joseph C. McAlexander, III (KOSS-2022), Petitioner’s case ignores the registration
requirements and security considerations of Scherzer’s community-based system,
which effectively prohibit the combinations of Brown and Scherzer relied upon in
the Petition. That the Petition could fail to consider the teachings of the references
as a whole is unsurprising given that Petitioner’s expert, Dr. Jeremy Cooperstock,
merely considered whether the relied-upon references “covered” the claims, or
whether the references “teach or suggest” the features of the claims. KOSS-2015,
17:4-8; APPLE-1003, ¶3. Further, the commercial success of Petitioner’s products,
the Apple HomePods, that practice claims 1 and 18 (and various dependent claims)
confirm the nonobviousness of the Challenged Claims.
Accordingly, the Board should confirm the patentability of the Challenged
Claims.
II. BACKGROUND
A. Summary of the ’451 Patent
Wireless consumer devices were continuing to increase in popularity at the
priority date of the ’451 Patent. KOSS-2022, ¶13. One issue in using a wireless
consumer device is configuring the device to connect to an infrastructure Wi-Fi
network, i.e., a wireless network that is accessed via a wireless access point and
connected to an Internet service provider. APPLE-1001, 3:40-44. Conventionally,
prior to the ’451 Patent, wireless consumer devices could have a user interface which
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enabled a user to select a wireless access point and input the access credentials
thereto. KOSS-2022, ¶13. Wireless consumer products without a suitable user
interface were provisioned with the access credentials for an infrastructure wireless
network only upon plugging the wireless consumer device into a conventional
computing device (e.g. a computer) and then transferring the access credentials from
the computer to the wireless consumer device, i.e. a “plug-to-connect” process.
KOSS-2022, ¶14; APPLE-1001, 2:3-7. Access credentials can comprise the
name/ID (e.g., SSID), password and/or encryption type for the network. APPLE-
1001, 5:13-16; KOSS-2022, ¶14.
Requiring a wireless consumer product to be plugged into a computer can be
a cumbersome process that presents numerous challenges. KOSS-2022, ¶¶15-16.
For example, a computer is not always available. Id., ¶16. Even when a computer is
available, the plug for connecting the wireless computer device to the computer may
not be available. Id. Also, smaller wireless consumer devices may not accommodate
a port for the plug to the computer. Id., ¶15.
The ’451 Patent solves this problem by providing a way “for configuring a
wireless device to communicate via an infrastructure wireless network, such as an
infrastructure Wi-Fi network, without having to physically plug the wireless device
into a computer to configure” the wireless device, “and without having to have an
existing infrastructure wireless connection to the wireless device.” APPLE-1001,
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2:51-58. The system and process could be used to “initially operate” the wireless
device, e.g. “out of the box.” Id. 4:35-36. A user of such a wireless device can
connect to an infrastructure wireless network in scenarios where a “plug-to-connect”
set-up scenario is not available or not preferred. KOSS-2022, ¶17. For these
reasons, the system and process described and claimed in the ’451 Patent provide a
significant improvement over the alternative “plug-to-connect” systems. Id.
The ’451 Patent includes twenty-one (21) claims, of which claims 1 and 18
are independent. Claim 1 recites a system comprising a wireless access point, an
electronic device, a mobile computer device that is in communication with the
electronic device via an ad hoc wireless communication link, and one or more host
servers that are in communication with the mobile computer device via the Internet.
APPLE-1001, 8:30-53. The electronic device could be wireless earphones, a video
player, a lighting system, a camera, a medical device, or a gaming system, for
example. APPLE-1001, 2:51-67, 6:10-15. Claim 18 is similar to claim 1, but does
not affirmatively claim the wireless access point as a component of the system. Id.,
10:1-24.
Referring to Figure 1 of the ’451 Patent, reproduced below, a system 10
includes a wireless access point 24, an electronic device 12, a mobile computer
device 22 that is in communication with the electronic device 12 via an ad hoc
wireless communication link 18, and host servers 30 that are in communication with
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the mobile computer device 22 via the Internet 28. The electronic device could be
an audio device (e.g., headphones) or a controller for electronic equipment. APPLE-
1001, 2. The host servers 30 receive and store the credential data for an
infrastructure wireless network provided by the wireless access point 24. APPLE-
1001, 57-67. The mobile computer device 22 transmits to the electronic device 12
the credential data for the infrastructure wireless network 26 stored by the one or
more host servers 30. Upon receiving the credential data for the infrastructure
wireless network 26 from the mobile computing device 22, the electronic device 12
connects to the wireless access point 24 using the credential data received from the
mobile computer device 22. In short, credential data received and stored on the host
servers 30 are transmitted to the electronic device 12 so that the electronic device 12
can access the Internet 28 via the wireless access point 24. Moreover, the credential
data are transmitted to the electronic device 12 without requiring the electronic
device 12 to be plugged into the mobile computing device 22.
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B. Person of Ordinary Skill in the Art
A person of ordinary skill in the art (POSITA) to which the ’451 Patent
pertains, according to the Patent Owner, “would be someone working in the
electrical engineering field with experience in wireless networks and wireless
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products.” KOSS-2022, ¶23. The POSITA would have a bachelor’s degree in
electrical engineering and at least two or more years of work experience in the
industry. Id. Accordingly, a POSITA would have studied and have practical
experience with circuit design, speaker components, and wireless communication.
Id.
This skill level is similar, although not identical, to that proffered by
Petitioner. APPLE-1003, ¶26 (“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”). The skill level of a POSITA is relatively low according to
each party because a person with just a relevant Bachelor’s Degree and two years of
experience would qualify as POSITA.
C. Petitioner’s Invalidity Grounds and Evidence
Petitioner asserts that independent claims 1 and 18 are obvious over the
combination of Brown (APPLE-1004) and Scherzer (APPLE-1005). Pet. at 1.
Petitioner’s obviousness grounds, however, ignore important teachings in the
references. As such, the asserted grounds fail to consider the references, particularly
Scherzer, as a whole, and fail to follow the framework set forth in Graham v John
Deere Co., 383 U.S. 1 (1966) (the “Graham framework.”)
A POSITA would not implement the teaching of Brown and Scherzer as
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proposed in the Petition because the access credentials received and stored on a
Scherzer-like server (i.e., Scherzer’s access credentials) would not be transmitted
and used by a mobile electronic device in Brown that is not registered with
Scherzer’s service (i.e. an unregistered device) to connect to a wireless access point.
Accordingly, the unregistered device would be unable to access the internet with
Scherzer’s access credentials. Utilizing Scherzer’s access credentials by an
unregistered device is technically precluded by Scherzer’s system given Scherzer’s
registration requirements for creating a user account and the associated tracking of
a registered user’s usage of the wireless networks. Alternatively, if Scherzer’s
registration and tracking requirements were ignored (despite Scherzer’s teachings to
the contrary) such that Scherzer’s access credentials could be freely disseminated to
and used by unregistered devices, the foundation supporting Scherzer’s
“community”-based system—a mutual exchange of access credentials for the benefit
of registered users—would be undermined. In fact, unfettered dissemination of
Scherzer’s access credentials would be problematic to its registered users and users
would not register with Scherzer’s service in the first place.
The two examples allegedly supporting the Petition’s obviousness grounds
based on Brown and Scherzer also exemplify problems in the Petition’s obviousness
analysis. Both examples demonstrate the Petition’s backwards approach to the
obviousness analysis. “This type of piecemeal analysis is precisely the kind of
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hindsight that the Board must not engage in.” In re NTP, Inc., 654 F.3d 1279, 1299
(Fed. Cir. 2011). (“Care must be taken to avoid hindsight reconstruction by using
the patent in suit as a guide through the maze of prior art references, combining the
right references in the right way so as to achieve the result of the claims in suit.”)
(internal citation and quotation omitted). More specifically, the First Example
requires a Scherzer-like software client be installed on one of Brown’s mobile
electronic devices, which is unnecessary to the network connectivity objective in the
First Example and only necessitated by the Petition’s unconcealed attempt to cover
the claimed invention. With respect to the Second Example, the credential sharing
theories are inconsistent with the teachings in Brown and Scherzer when considered
in their entireties.
Petitioner supports its assertions with testimony from Dr. Jeremy Cooperstock
(“Cooperstock”). APPLE-1003. However, the Board should give little weight to
Cooperstock’s testimony because his methodology fails to follow the Graham
framework and embodies a clear case of hindsight reconstruction of the claimed
invention.
For these reasons, the independent claims are patentable over Brown and
Scherzer. All five grounds in the Petition build on the combination of Brown and
Scherzer as applied to the independent claims. See Pet. at 1. The additional
references cited in the Petition and relied upon for Grounds 1B-1E do not cure the
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deficiencies of Brown and Scherzer relative to the independent claims. Thus, none
of the Challenged Claims would have been obvious to a POSITA.
1. Brown
Brown discloses a technique for transferring credential data for a WiFi
network to a “first mobile electronic device” from a “second mobile electronic
device.” APPLE-1004, Abstract. With reference to Brown’s Figure 1 (reproduced
below), the second electronic device 105 can communicate with a communication
network 103 (e.g., the Internet) via a wireless link 185 that connects to an access
point 180 based on configuration data 182 stored in a memory 162. Id. at 4:39–49.
The configuration data can be transferred from the second device 105 to the first
device 101 via another link 190, which can be a Bluetooth link. Id. at 7:28-31. The
first device 101 can then connect to the access point 180 with the configuration data
182.
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With respect to user(s) of the first and second mobile devices, Brown only
discloses that both “device 101 and device 105 can each be associated with the same
user (not depicted), and hence is can be desirable to communicate with the same
wireless access points, such as access point 180.” APPLE-1004, 5:13-17 (emphases
added). When the same user controls both devices 101 and 105, misappropriation
of one user’s access credentials by another user is a non-issue. KOSS-2022, ¶39.
Brown does not disclose a host server that stores the credential data. Id., ¶42.
Petitioner does not assert that it does. Pet. at 16-20, 37-38; APPLE-1003, ¶¶28-34,
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¶¶85-87. The configuration data 182 in Brown is stored on the devices 101, 105 and
the transmission of configuration data is device-to-device. KOSS-2022, ¶38
2. Scherzer
To supply the missing claim elements—related to the host server that stores
the credential data for a wireless access point that is transmitted to the electronic
device for connecting the electronic device to the wireless access point—the Petition
turns to Scherzer. Pet. at 24-33 (Brown’s “focus is less on how the first device
obtains those credentials and the accompanying user experience... These challenges
are instead addressed by Scherzer through the use of a software client....” Pet. at 24-
25.) Scherzer is directed to a “collaborative community of users,” which allows the
mutual exchange of access information between registered users. APPLE-1005,
¶[0015]. In Scherzer’s network configuration process, a user registers with the
Scherzer service and then provides registration information to the Scherzer server,
including access information for that user’s access point. Id. at ¶[0020]. The
registered user allows other registered users to receive the access information and,
“in exchange,” can receive access information for other access points that were
provided to the Scherzer server by other registered users. Id. That way, a first user
can access another registered user’s access point when the first user cannot connect
to his/her own access point. Notably, sharing of access information requires a user
account and “acceptability” of that account. APPLE-1005, Abstract and claim 1;
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KOSS-2022, ¶48. Network access is provided when “[a] request is received for
access information” and “[u]ser contribution account acceptability is determined.”
APPLE-1005, Abstract and claim 1.
Referring to Scherzer’s Figure 1 (reproduced below), registered user devices
104, 106, 108, 110, and 112 can access the Internet 114 via the wireless access points
100 and 102 of registered users. Id. at ¶[0020]. The application server 116, which
is also connected to the Internet 114, receives and stores the access information for
the access points of the community of registered users. Id.
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Network access in Scherzer’s system is only provided to the registered users
104, 106, 108, 110, 112. KOSS-2022, ¶¶48, 54. In fact, in IPR2021-00600, which
is also directed to the ’451 Patent and also relies on Scherzer, Petitioner describes
the limitations on the sharing of access information in Scherzer as follows:
Scherzer discloses a system that expands Internet access by allowing
registered users to obtain credential data necessary to connect to access
point of other registered users. To enjoy this benefit, a device is
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required to be registered with Scherzer’s service using a software client
that allows the device to communicate with an application server 116.
IPR2021-00600, Pet. at 27 (emphases added). Stated differently, Scherzer’s
software only shares access information between registered users.
Prior to providing access information, user account acceptability is
determined. Various means for determining acceptability are described in Scherzer
including “[a] having agreed to a trial period and being associated with a temporary
user contribution account, [b] having registered and being associated with a
temporary user contribution account, [c] having a temporary user contribution
account, [d] having a user contribution account, [e] having a user contribution
account balance, [f] having a user contribution account balance above a threshold
value, [g] having a user contribution account balance below a threshold value, and
[h] having a user contribution account balance in a range a values.” APPLE-1005,
claim 11. Notably, in every instance, acceptability is contingent on the existence of
a temporary or non-temporary user account, i.e., by registering with the Scherzer
software client. KOSS-2022, ¶¶46, 48.
The user contribution account in Scherzer “comprises a way to track the
amount of access that is given by a user to other users of the network … [and] a way
to track the amount of access that is used by a user of other users’ access points. In
some embodiments, user contribution accounting tracks the balance of bandwidth
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provided by a user via the user’s access point to other users and the bandwidth used
by the user via other’s access points.” APPLE-1005, ¶[0022] (emphases added).
Therefore, Scherzer’s sharing of access information is limited to only registered
users based on the acceptability of their user account, which can be determined by
tracking the user’s access. KOSS-2022, ¶¶46-49.
A user’s access can be tracked by their user registration information, which is
provided during the registration process. Id. The “registration information is used
by the provider of the network to set up a user contribution account and to enable
other registered users of the network to access the user’s access point.” APPLE-
1005, ¶[0020] (emphasis added). For example, a media access control (MAC)
address can be provided to Scherzer’s server in the registration information required
for creating a user account. Id. at ¶[0021]. A MAC address is a unique identifier
that can be used as a network address for communications, including for Wi-Fi
networks. KOSS-2022, ¶50. A POSITA would have understood that registered
devices would have a MAC address identifier that is associated with a user account,
and unregistered devices would have a MAC address identifier that is not associated
with a user account. Id. Tracking by Scherzer’s service ensures unregistered
devices, i.e., those with a MAC address that is not associated with a registered user,
do not obtain and use Scherzer’s access credentials to connect to a registered user’s
wireless network. Id. Simply put, a POSITA would understand from Scherzer that
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when an unregistered device attempts to connect to an access point in Scherzer’s
community of registered users, connection to the access point would be denied
because the MAC address of the unregistered device is not associated with any
registered user in Scherzer’s community. Id.
3. Cooperstock’s Testimony
Cooperstock’s declaration summarizes Brown, then summarizes Scherzer,
then proposes the hypothetical Brown-Scherzer combination in a blatant attempt to
merely cover the claim elements, without assessing whether it would have been
obvious to a POSITA to make the combination proposed in the Petition.
Cooperstock admitted to merely looking at the references provided by Petitioner’s
counsel “to question whether the claims of the ’451 were actually novel or had been
covered already by ... the prior art references.” KOSS-2015, 17:4-8 (emphasis
added). This testimony coincides with his direct testimony that Petitioner’s counsel
merely asked him “to consider whether certain reference teach or suggest the
features recited” in the Challenged Claims. APPLE-1003, ¶3. Such an analytical
approach is result-oriented and compels improper hindsight reconstruction of the
claimed invention. Thus, Cooperstock’s testimony has little probative value and
should be given little weight.
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III. THE CHALLENGED CLAIMS WOULD NOT HAVE BEEN
OBVIOUS
A. The Brown-Scherzer Combination
The Petition asserts that independent claims 1 and 18 are unpatentable under
§ 103 over Brown (APPLE-1004) and Scherzer (APPLE-1005) and proposes the
Brown-Scherzer combination, which is reproduced below from the Petition.
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The Petition then provides two examples allegedly demonstrating advantages
of the Brown-Scherzer combination in practice. Pet. at 16-59. In each example,
access credentials stored on a Scherzer-like server (i.e., Scherzer’s access
credentials) are supposedly transmitted to and used by a mobile device that is not
registered with Scherzer’s service (i.e., the unregistered mobile electronic device
101). The Petition proposes that the Brown-Scherzer combination would enable the
transmission of Scherzer’s access credentials from the mobile device 105 to the
mobile device 101 so that the mobile electronic device 101 can use those access
credentials to access a wireless network of a registered user to Scherzer’s
community, Pet. at 28-33—even though the mobile electronic device 101 is not
registered with the Scherzer-like service, and, thus, is not associated with a user
account or a registered MAC address thereof. Such a transmission of access
credentials from the Scherzer-like server to an unregistered device and use thereof
by the unregistered device is a blatant attempt merely to “cover” the limitations of
claim 1 related to credential data received and stored on a server and transmitted to
an electronic device for connecting the electronic device to the wireless access point.
The assertion that a POSITA would attempt to transmit these access credentials to
an unregistered device for connecting the unregistered device to a wireless access
point in Scherzer’s community of registered users is fatal to the Petition’s
obviousness analysis. In fact, a POSITA would not attempt to connect an
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unregistered device to one of Scherzer’s wireless networks via Scherzer’s access
credentials for at least the following reasons.
First, the transmission and use of Scherzer’s access credentials by an
unregistered device ignores the account acceptability requirement and associated
tracking in Scherzer, which prevents unregistered devices from accessing a
registered user’s wireless access point. KOSS-2022, ¶¶51-54. Either, option A,
Scherzer’s account acceptability requirement requires an acceptable user account
and would prevent the free dissemination of access credentials to unregistered
devices, or, option B, Scherzer’s account acceptability requirement and associated
tracking can be dropped from the Brown-Scherzer combination, which is the
Petitioner’s apparent position. Id., ¶¶51-55. The claims are not obvious under either
option.
Consistent with option (A), a POSITA would understand that Scherzer
controls the dissemination of access credentials such that only registered users can
obtain the benefit of other registered user’s access credentials. Id., ¶¶51-55. Stated
differently, an unregistered device is precluded from using Scherzer’s access
credentials to access one of Scherzer’s wireless networks in view of Scherzer’s
account acceptability requirements and associated tracking. Id. Thus, the claims
would not have been obvious under option A because the unregistered device could
not connect to the wireless network/access point with Scherzer’s access credentials
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even if the unregistered device somehow obtained Scherzer’s access credentials.1
However, if the Brown-Scherzer combination proposed in the Petition can
circumvent the access sharing limitations in Scherzer (that is, ignore the teachings
of Scherzer in its entirety) and, instead, permit the widespread and unfettered
dissemination of network/access point access credentials of registered user to
unregistered devices for use by the unregistered devices, consistent with option B, a
POSITA would not download the Scherzer-like software to Brown’s device 105 at
all. KOSS-2022, ¶56. If access credentials were freely disseminated from the
Scherzer-like server to unregistered devices as proposed in the Petition, however
impractical in view of practical considerations and common security features,
Scherzer’s service would inevitably reduce into an unwieldy and undesirable service
in which unregistered users are rewarded, i.e., they can freely take advantage of
other’s wireless networks, while registered users are penalized, i.e., they sacrifice
1
It is unlikely Brown’s device 105 would even receive Scherzer’s access credentials
from Brown’s device 101 in the first place. KOSS-2022, ¶60. The Scherzer system
would likely include security features to safeguard the registered users’ access
credentials. Id. For example, the Scherzer software client on device 101 of Brown
in the Brown-Scherzer combination would likely preclude the transfer of those
access credentials to unregistered devices. Id.
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the bandwidth on their own wireless network and risk becoming crowded out of their
own wireless network entirely. Id. Such an approach would undermine Scherzer’s
exchange of access credentials for the mutual benefit of the registered users in the
community. Id. Indeed, it is unlikely users would register with Scherzer’s service
if their access credentials could be freely disseminated, as permitted by the Petition’s
combination. Id.
Second, upon reading Scherzer in its entirety, a POSITA would be
discouraged from allowing the unfettered dissemination of access credentials to
unregistered devices. KOSS-2022, ¶¶48, 49, 58. Mutual “exchange” of access
credentials between registered users is the basis for the Scherzer communal system
and modifications that undermine this “collaborative community” are discouraged
by Scherzer as a whole. Id.; APPLE-1005, ¶¶[0015], [0020].
Third, instead of the unrestrained distribution of generally private information
(i.e., access credentials to a user’s wireless access point), a more straightforward and
legitimate approach to improving network connectivity is available. In short,
alternative, legitimate network configuration schemes are also available to the
wireless devices without resorting to the examples proposed in the Petition. KOSS-
2022, ¶63. For example, Brown’s system alone could be used: Brown’s mobile
device 105 could transfer access credentials that were not obtained from Scherzer’s
service to the mobile device 101. Id. Alternatively, Scherzer’s system alone could
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be used. The user of Brown mobile device 101 could simply download the Scherzer-
like software to the mobile device 101 to gain access to Scherzer’s community of
wireless networks/access points. Id. These easier, clear solutions are reasons that a
POSITA would not pursue the complicated examples proposed in the Petition. Id.
Only hindsight reconstruction of the claimed invention justifies the Petition’s
combination in which access credentials received and stored on the Scherzer-like
server are freely disseminated to and used by an unregistered device. The
Petitioner’s hindsight-driven approach abandons the Graham framework and
obscures any comparison between the claimed invention and Brown or Scherzer.
B. Relevant Issues for Obviousness Determination
The issue of obviousness is not whether a Scherzer-like software client can
be installed on Brown’s mobile electronic device 105 as shown in the Petition’s
Brown-Scherzer combination. Stated differently, “[t]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated into the
structure of the primary reference” and “[c]ombining the teachings of references
does not involve an ability to combine their specific structures.” Institution
Decision, Paper 22 at 33 (quoting In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981);
In re Nievelt, 482 F.2d 965, 968 (C.C.P.A. 1973)). It logically follows that refutation
of Petitioner’s obviousness conclusion does not require proof that the Scherzer-like
software client cannot be installed on Brown’s mobile electronic device 105.
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“Rather, the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Keller, 642 F.2d at 425.
The combined teachings of Brown and Scherzer do not suggest installing a
Scherzer-like software client on Brown’s second mobile electronic device 105 to
enable transmission of Scherzer’s access credentials to an unregistered device, such
as the first mobile device 101 in Brown. KOSS-2022, ¶¶64-67. If Scherzer’s
account acceptability requirements and associated tracking are maintained (which a
POSITA would be motivated to maintain in light of Scherzer’s teachings as a whole,
Id., ¶¶55, 58-59.), the combination would not succeed or operate as Petitioner
proposes. On the other hand, if Scherzer’s account acceptability and tracking is
ignored, a user would not download the Scherzer-like software client on the
“second” device in the first place because “in exchange” for the user’s registration
with Scherzer’s service, the user would lose control of his/her network/access point.
Id., ¶55.
C. A POSITA Would Not Attempt To Use Scherzer’s Access
Credentials With an Unregistered Device
The Brown-Scherzer combination in the Petition relies on the transmission of
access credentials for a wireless access point stored on Scherzer’s server to an
unregistered device, i.e., a device that is not registered with Scherzer’s service, such
as Brown’s device 101, so that the unregistered device can connect to the wireless
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access point. Pet. at 30-33. Upon considering the references in their entireties, a
POSITA would not combine the teachings of Brown and Scherzer as proposed in
the Petition. Claims 1 and 18 would not have been obvious over Brown and
Scherzer.
1. Transmission and Use of Scherzer’s Access Credentials By an
Unregistered Device Ignores the Account Acceptability
Requirement and Associated Tracking in Scherzer
A POSITA, upon considering the references in their entireties, would not
attempt to utilize access credentials for a wireless access point stored on a Scherzer-
like service to connect an unregistered device to the wireless access point. Scherzer
only provides access credentials to registered users having an acceptable user
account. KOSS-2022, ¶¶48, 54. Moreover, Scherzer teaches tracking of devices,
such as with MAC address identifiers associated with a registered user’s account,
such that unregistered devices could be detected when they seek to connect to the
wireless network/access point of a registered device and accordingly denied
connection. Conversely, if access credentials from Scherzer’s server were freely
disseminated to and used by unregistered devices, as proposed by the Petition,
Scherzer’s service would be undesirable to its registered users and unsatisfactory as
a network sharing system. Id., at ¶55.
Scherzer controls the dissemination of access credentials such that only
registered users can obtain the benefit of other registered user’s access information.
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APPLE-1005, ¶[0020] (“A user … allows access to the user’s access point in
exchange for being allowed to access other user’s access points.”) (emphasis
added). Stated differently, the transfer of access credentials from Scherzer’s server
to unregistered devices is of no value in Scherzer because the unregistered devices
could not connect to the wireless network/access point of the registered users. In
Scherzer, prior to providing access information, “user contribution account
acceptability” is determined. Id. at Abstract. In other words, the existence of a user
contribution account, i.e., registration with the Scherzer service, is a prerequisite to
receiving other registered user’s access credentials. KOSS-2022, ¶48. There is no
teaching, suggestion, motivation, or other apparent reason—absent hindsight
reconstruction of the claimed subject matter—to implement the Brown-Scherzer
combination proposed in the Petition in which access credentials received and stored
on a Scherzer-like server are transmitted to an unregistered device. Id. at ¶¶58-59,
64. A POSITA simply would not implement the teachings of Brown and Scherzer
together in this manner, especially given the teachings of Scherzer, as a whole, which
discourages the dissemination/use of access credentials to unregistered devices
through its user accountability and tracking requirements. Id. at ¶51.
Scherzer describes tracking of network connections. For example, the user
account described in Scherzer “comprises a way to track the amount of access that
is given by a user to other users of the network … [and] a way to track the amount
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of access that is used by a user of other users’ access points. In some embodiments,
user contribution accounting tracks the balance of bandwidth provided by a user via
the user’s access point to other users and the bandwidth used by the user via other’s
access points.” APPLE-1005, ¶[0022] (emphases added). Tracking ensures that
access credentials are effectively only distributed to and used by registered devices
in accordance with the user contribution accounts. KOSS-2022, ¶56. Tracking the
amount of access by a device can be achieved by tracking of the MAC addresses,
APPLE-1005, ¶[0021], which a POSITA would have known how to implement.
KOSS-2022, ¶56. Preventing access to a wireless access point by an unauthorized
device was also well-known to a POSITA. Id. at ¶¶48-51.
The Brown-Scherzer combination proposed in the Petition sidesteps
Scherzer’s tracking and dissemination constraints and instead would permit—even
require—widespread, unfettered distribution of registered users’ access information
to unregistered devices, which is contrary to the collaborative community at the
foundation of the Scherzer system. In fact, such an implementation of Brown and
Scherzer would not work. KOSS-2022, ¶49. The tracking in Scherzer prevents
unregistered devices from using Scherzer’s access credentials to access the wireless
access points of its registered users. Id. at ¶48. Stated differently, a POSITA, upon
reading Scherzer in its entirety, would understand that an unregistered device would
be unable to access the wireless access point via the access credentials received and
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stored on the Scherzer server. Id. For example, if the MAC address was not
identified by Scherzer’s server, the device would be unable to connect with the
wireless access point. Id. at ¶¶50-52.
The uncontrolled transmission and use of access information proposed in the
Petition would undermine the collaborative agreement justifying Scherzer’s
mutually-beneficial service for registered users. Id. at ¶49. If the combination
worked as Petitioner suggested, unregistered users would have access to the access
credentials of any wireless network provided to the Scherzer-like server. Id. The
Petition does not explain, or even recognize, any limits to the dissemination of access
credentials in Scherzer. It logically follows that, according to the Petition’s position,
a limitless number of unregistered users can freeload on the wireless networks of
registered users to the Scherzer service. Id. at ¶49. The Scherzer service would
inevitably become unwieldy and overrun by these freeloading devices, i.e.,
unregistered devices that obtained the access credentials indirectly from a registered
device. Id. Registered users would lose the ability to control their own wireless
networks. Id. Registered users might even be crowded out of their own network as
freeloaders join without constraint. Id. In short, there would be no advantage to
registering with Scherzer’s service, only the detrimental consequence of sacrificing
bandwidth for the advantage of unregistered devices. The Petition’s Brown-
Scherzer combination and applications thereof destroys any incentive to register
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with Scherzer’s service. Id. Instead, users would merely be encouraged to freeload
on the generosity of Scherzer’s registered users without registering. Id. This would
render Scherzer’s service unsatisfactory as a collaborative community of credential
sharing for the mutual benefit of the registered users and would, in fact, discourage
users from registering with Scherzer’s service entirely. Id. at ¶¶ 49, 52.
2. Scherzer, As a Whole, Discourages Unfettered Dissemination
of Access Credentials to Unregistered Devices
Upon reading Scherzer in its entirety, a POSITA would be discouraged from
attempting the Petition’s proposed implementation of the Brown-Scherzer
combination. Scherzer emphasizes that access credentials are exchanged via a
“collaborative community of users.” APPLE-1005, ¶[0015]. In fact, collaboration
is the foundation of Scherzer’s credential sharing system. KOSS-2022, ¶42. The
collaboration between registered users is easily distinguishable from the unilateral
taking of access credentials by unregistered users, i.e., devices that did not provide
their own access credentials as part of Scherzer’s “exchange.” APPLE-1005,
¶[0020]. Dissemination of Scherzer’s shared access credentials beyond Scherzer’s
registered users is inconsistent with the underlying principle of Scherzer’s system—
collaboration between registered users for improving network access by the
registered users. KOSS-2022, ¶¶ 42, 52. In other words, dissemination of access
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credentials to unregistered devices, as proposed in the Petition, undermines the very
intent of Scherzer. Id. at ¶ 43.
3. A Simpler Approach to Network Connectivity Exists
A simpler and more legitimate approach to network connectivity is
possible. KOSS-2022, ¶ 57. Brown and Scherzer separately provide improved
network connectivity without condoning the unfettered dissemination of access
credentials. Id. Per Brown, a user can pass appropriately-obtained access
credentials between devices (e.g., between devices associated with the same user).
Id. Per Scherzer, a user can register multiple devices and obtain access credentials
directly from the Scherzer server for each device. Id. Because these more
straightforward and legitimate approaches to improving network connectivity are
available, which do not rely on the convoluted Brown-Scherzer combinations in the
Petition, a motivation for the asserted combination is lacking. Id.
B. The Petition’s Obviousness Analysis Relies on Impermissible
Hindsight Reconstruction
The Petition presents two examples to demonstrate the alleged “advantages to
network connectivity” achieved with the Brown-Scherzer combination. Pet. at 27-
28. However, the examples fail to justify the combination and instead represent clear
applications of hindsight reconstruction based on the claimed subject matter.
Network connectivity in the First Example is achieved exclusively with Brown’s
system and does not rely on a Scherzer-like software client or host server that
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receives and stores credential data. Stated differently, the teachings of Scherzer are
irrelevant to the network connectivity achieved in the First Example. The Second
Example relies on unauthorized and unacceptable sharing of credential data under
Scherzer’s plain teachings and, thus, runs contrary to common sense and the
teachings of Scherzer as a whole, including the teachings to track registered users’
acceptability of the users’ accounts. In short, these examples do not demonstrate the
“advantages to network connectivity” touted in the Petition, but instead, reveal the
blatant shortcomings in the Petition’s obviousness analysis.
1. Defects In The Petition’s First Example
In the Petition’s First Example, the first device is a smartphone having access
credentials for connecting to a work wireless access point, and the second device is
a tablet without a cellular data plan and without access credentials to connect to the
work wireless access point. Pet. at 28. The objective of the First Example is to
enable the tablet to access the Internet via the work wireless access point. Pet. at 29
(“[T]he user may decide at some point [sic] use the tablet to access the Internet while
at work.”)
A simple wireless network configuration process for the tablet is readily
apparent to a POSITA. KOSS-2022, ¶63. The tablet could simply obtain the access
credentials directly from the smartphone via Brown’s credential transfer technique.
Id. Such a straightforward approach would achieve the objective of the tablet being
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able to access the Internet while the user is at work. Importantly, the tablet is able
to obtain the access credentials to the work wireless access point without any reliance
on the credential sharing technique of Scherzer. In such instances, access credentials
received and stored in a Scherzer-like server are not transmitted to the tablet.
The Petition overly complicates an otherwise simple process by requiring the
smartphone to first register with Scherzer’s service and further requiring the access
credentials for the work wireless access point to be uploaded from the smartphone
to Scherzer’s application server. Specifically, the Petition states, “[t]he user
previously uploaded this information to Scherzer’s application server when
registering for Scherzer’s server.” Pet. at 28. However, the Petition never explains
why the smartphone would be registered with Scherzer’s service. In fact, registration
of the smartphone with Scherzer’s service is entirely unnecessary to the user’s
objective of enabling the tablet to access the Internet at the user’s work. The Petition
also never explains why the access information for the work wireless access point
would be uploaded to Scherzer’s application server. The access data to the work
wireless access point having been uploaded to Scherzer’s application server is
irrelevant to the tablet receiving the access information from the smartphone via
Brown’s technique of credential transfer technique. KOSS-2022, ¶63. In fact, the
Petition does not cite to Scherzer in explaining its First Example beyond the initial
requirement that the smartphone be registered with Scherzer’s service and the access
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credentials for the work wireless access point be uploaded to Scherzer’s application
server.
The only justification for the superfluous inclusion of Scherzer teachings in
the First Example related to registration with Scherzer’s service and uploading of
access credentials for the work wireless access point to Scherzer’s application server
is to “cover” the claim limitations. Specifically, the teachings in Scherzer are relied
upon for teaching “one or more host servers [that] receive and store credential data
for an infrastructure wireless network provided by the wireless access point” and
wherein “the mobile computer device is for transmitting to the electronic device...
the credential data for the infrastructure wireless network stored by the one or more
host servers; and the electronic device is for, upon receiving the credential data for
the infrastructure wireless network ... connecting to the wireless access point,” as
recited in independent claim 1. Without the addition of these unnecessary
requirements from Scherzer, the Petitioner’s Brown-Scherzer combination would
not provide the transmission of credential data stored on a host server to the
electronic device that is recited in the independent claims. More specifically,
without the access information to the work wireless access point being uploaded to
Scherzer’s application server from the smartphone, the smartphone would not
transmit to the tablet the access information for the work wireless access point that
is also stored on Scherzer’s application server.
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