Koss Corporation v. Bose Corporation

United States Court of Appeals
for the Federal Circuit
______________________
KOSS CORPORATION,
Appellant
v.
BOSE CORPORATION,
Appellee
______________________
2022-2090
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00297.
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KOSS CORPORATION,
Appellant
v.
BOSE CORPORATION,
Cross-Appellant
______________________
2023-1173, 2023-1179, 2023-1180, 2023-1191
______________________
Case: 22-2090 Document: 40 Page: 1 Filed: 07/19/2024

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KOSS CORPORATION v. BOSE CORPORATION 2
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021-
00612, IPR2021-00680.
______________________
Decided: July 19, 2024
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MARK G. K NEDEISEN, K&L Gates LLP, Pittsburgh, PA,
argued for appellant. Also represented by BRIAN P AUL
BOZZO, RAGAE G HABRIAL , CHRISTOPHER MICHAEL VERDINI,
MICHELLE WEAVER . Also represented by L AUREN S.
MURRAY in Appeal No. 2022-2090.
N ATHAN R. SPEED , Wolf Greenfield & Sacks, PC, Bos-
ton, MA, argued for appellee in Appeal No. 22-2090. Also
represented by G REGORY S. N IEBERG, MICHAEL N. RADER ,
New York, NY.
MICHAEL N. RADER, Wolf Greenfield & Sacks, PC, New
York, NY, argued for cross-appellant in Appeal Nos. 2023-
1173, 2023-1179, 2023-1180, 2023-1191. Also represented
by G REGORY S. N IEBERG; N ATHAN R. SPEED, Boston, MA.
______________________
Before H UGHES , STOLL , and CUNNINGHAM , Circuit Judges.
HUGHES , Circuit Judge.
Koss Corp. appeals, and Bose Corp. cross-appeals, the
Patent Trial and Appeal Board’s decisions in IPR2021-
00297, IPR2021-00612, and IPR2021-00680, involving
Koss Corp.’s wireless earphone patents. Because all the
claims in the patents at issue were invalidated in prior dis-
trict court litigation, we find the appeals moot and dismiss.
Case: 22-2090 Document: 40 Page: 2 Filed: 07/19/2024

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KOSS CORPORATION v. BOSE CORPORATION 3
I
A
Koss Corp. (Koss) is the assignee of U.S. Patent No.
10,368,155 (the ’155 patent), U.S. Patent No. 10,469,934
(the ’934 patent), and U.S. Patent No. 10,206,025 (the ’025
patent). Koss I J.A. 135; Koss II J.A. 226, 258.1 The patents’
common specification discloses a wireless earphone that
communicates with a digital-audio source, such as an iPod,
over an ad hoc wireless network like Bluetooth. Koss I J.A.
154–55; Koss II J.A. 245–46, 277–78.
B
On July 22, 2020, Koss filed a patent infringement suit
in the District Court for the Western District of Texas
against Bose Corp. (Bose), alleging that Bose infringed
three Koss patents: the ’155 patent, the ’025 patent, and
the ’934 patent. Koss I J.A. 3655. On the same day, Koss
also filed an infringement action concerning the ’155, ’934,
’025, along with other patents against Plantronics, Inc.
(Plantronics). Koss I J.A. 7909. In response, Bose filed a
motion challenging venue in the Western District of Texas.
Def.’s Motion to Dismiss at 1, Koss Corp. v. Bose Corp.,
Case No. 6:20-cv-00661, ECF No. 20 (W.D. Tex. Dec. 17,
2020). Separately, Bose petitioned for inter partes review
(IPR) of all three patents before the Patent Trial and Ap-
peal Board. Koss I J.A.167–278; Koss I J.A. 4–5.
Then, on December 10, 2020, Bose filed a declaratory
judgment action in the District Court for the District of
Massachusetts seeking a declaration of noninfringement of
the three Koss patents asserted against Bose in the
1 For simplicity, citations to the briefs, joint appen-
dix, and record in Appeal No. 22-2090 are prefaced by Koss
I, while citations to the briefs, joint appendix, and record
in Appeal No. 23-1173 are prefaced by Koss II.
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KOSS CORPORATION v. BOSE CORPORATION 4
Western District of Texas. Complaint at 1, Koss Corp. v.
Bose Corp., Civ. Action No. 1:20-cv-12193, ECF No. 1 (D.
Mass. Dec. 10, 2020). The case was stayed pending resolu-
tion of Bose’s improper-venue motion in the Western Dis-
trict of Texas. Koss Corp. v. Bose Corp., Civ. Action No.
1:20-cv-12193, ECF No. 8 (D. Mass. Feb. 5, 2021).
In June 2021, the District Court for the Western Dis-
trict of Texas dismissed Koss’s complaint against Bose for
improper venue. Order, Koss Corp. v. Bose Corp., Case No.
6-20-cv-00661, 2021 WL 7541417 (W.D. Tex. June 22,
2021). Upon dismissal, Koss filed a counterclaim against
Bose in the District Court for the District of Massachusetts
asserting infringement of the same three Koss patents. An-
swer and Counterclaims at 9–27, Koss Corp. v. Bose Corp.,
Civ. Action No. 1:20-cv-12193, ECF No. 14 (D. Mass. July
29, 2021).
In September 2021, the Massachusetts district court
stayed the case pending resolution of the IPRs, Order, id.,
ECF No. 30 (D. Mass. Sept. 3, 2021),which the Board insti-
tuted, Koss I J.A. 408–60, Koss II J.A. 1046–89, 11959–
12012, and continued the stay until their completion, Or-
der, Koss Corp. v. Bose Corp., Civ. Action No. 1:20-cv-
12193, ECF No. 33 (D. Mass. Oct. 15, 2021). The Massa-
chusetts case remains stayed pending Bose’s IPRs of the
Koss patents, including the appeals of those IPRs now be-
fore us.
During this same period, Koss’s district court infringe-
ment action against Plantronics—involving, among other
patents, the same three patents asserted against Bose—
was transferred to the Northern District of California. Or-
der, Koss Corp. v. Plantronics, Inc., Case No. 6:20-cv-
00663, ECF No. 45 (W.D. Tex. May 20, 2021). Plantronics
moved to dismiss Koss’s First Amended Complaint on the
ground that all claims of the asserted patents, including all
claims of the ’155, ’934, and ’025 patents, are invalid under
35 U.S.C. § 101 for claiming patent-ineligible subject
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KOSS CORPORATION v. BOSE CORPORATION 5
matter. Defs.’ Motion to Dismiss First Amended Complaint
at 8–17, 22–25, Koss Corp. v. Plantronics, Inc., Case
No. 4:21-cv-03854, ECF No. 80 (N.D. Cal. Nov. 1, 2021).
The motion to dismiss was fully briefed. Response, id., ECF
No. 82 (N.D. Cal. Nov. 15, 2021), Reply, id. ECF No. 83
(N.D. Cal. Nov. 22, 2021). The district court granted Plant-
ronics’s motion, finding all claims of the asserted patents—
including the ’155, ’934, and ’025 patents at issue here—
invalid under 35 U.S.C. § 101.2 Order at 16, id., ECF No. 88
(N.D. Cal. Nov. 16, 2022).
Following the district court’s invalidation of all of the
patents’ claims, it granted Koss leave to amend. Id. Koss
then filed a Second Amended Complaint in which it re-as-
serted the ’934 and ’025 patents against Plantronics, but
limited its infringement allegations to certain claims that
involved signal strength technology in the patents. Second
Amended Complaint at 16–34, id., ECF No. 91 (N.D. Cal.
Dec. 7, 2022) (First and Second Causes of Action). Plant-
ronics moved to dismiss the Second Amended Complaint on
the ground that the asserted patents’ claims are unpatent-
able under 35 U.S.C. § 101. Defs.’ Motion to Dismiss Sec-
ond Amended Complaint at 8–14, 20–25, id., ECF No. 93
(N.D. Cal. Dec. 21, 2022). Again, the motion was fully
briefed. Response, id., ECF No. 96 (N.D. Cal. Jan. 11,
2023); Reply, id., ECF No. 98 (N.D. Cal. Jan. 25, 2023).
Rather than wait for the district court to decide Plant-
ronics’s second Motion to Dismiss, Koss voluntarily stipu-
lated to dismiss the litigation with prejudice. Stipulation
at 2, id., ECF No. 101 (N.D. Cal. Aug. 4, 2023). When doing
so, Koss did not ask the district court to vacate its earlier
order finding all claims of the asserted patents invalid. The
district court subsequently entered an order formally
2 The Dismissal Order also invalidated all claims of
three other Koss patents not at issue in these appeals: U.S.
Patent Nos. 10,506,325; 10,757,498; and 10,848,852.
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KOSS CORPORATION v. BOSE CORPORATION 6
dismissing Koss’s suit against Plantronics with prejudice.
Order, id., ECF No. 102 (N.D. Cal. Aug. 4, 2023). The dead-
line for Koss to appeal the district court’s final judgment
was September 5, 2023. See Fed. R. App. P. 4(a)(1)(A). Koss
did not appeal.
On September 20, 2023, after the Plantronics dismis-
sal, Bose moved to dismiss the appeals of the IPRs before
us as moot (Appellee’s Mot.), arguing that Plantronics in-
validated the claims at issue in the appeals. Koss I ECF No.
30; Koss II ECF No. 35. Koss opposed the motions (Appel-
lant’s Opp.) and Bose replied (Appellee’s Reply). Koss I
ECF Nos. 32, 34; Koss II ECF Nos. 37, 39. Oral arguments
in both Koss I and II occurred on February 6, 2024, address-
ing both the substance of the appeals and the issue preclu-
sion issue. Koss I ECF No. 36; Koss II ECF No. 41. We have
statutory jurisdiction under 28 U.S.C. § 1295(a)(1).
II
Issue preclusion is “a purely procedural issue” as pre-
sented here, therefore we apply the law of the regional cir-
cuit—in this case, the Ninth Circuit—with respect to the
effect of a previous judgment. RF Del., Inc. v. Pac. Keystone
Techs., Inc., 326 F.3d 1255, 1261 (Fed. Cir. 2003).3
3 Our “court has developed its own law with respect
to res judicata (including collateral estoppel) in non-patent
cases . . . . But in patent cases, despite our exclusive juris-
diction, we have generally stated that we look to regional
circuit law for general principles of res judicata.” Uniloc
USA, Inc. v. Motorola Mobility LLC, 52 F.4th 1340, 1346
n.3 (Fed. Cir. 2022). Despite this ambiguity, we need not
resolve which circuit’s law should govern here because our
law and Ninth Circuit law are, in relevant respects, the
same. See, e.g., Foster v. Hallco Mfg. Co., 947 F.2d 469, 477
n.7 (Fed. Cir. 1991) (applying Ninth Circuit law to an issue
of res judicata).
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KOSS CORPORATION v. BOSE CORPORATION 7
III
The Constitution limits the “judicial power” vested in
the courts to “[c]ases” or “[c]ontroversies.” U.S. CONST .
art. III, § 2. “It is well settled that the case-or-controversy
requirement, including mootness, subsists through all
stages of federal judicial proceedings, trial and appellate.”
Synopsys, Inc. v. Lee, 812 F.3d 1076, 1078 (Fed. Cir. 2016)
(quotation marks omitted). “[A]n appeal should . . . be dis-
missed as moot when, by virtue of an intervening event, a
court of appeals cannot grant any effectual relief whatever
in favor of the appellant.” Calderon v. Moore, 518 U.S. 149,
150 (1996) (quotation marks omitted). Thus, if the patent
claims at issue in these appeals are invalid due to the “in-
tervening” dismissal in Plantronics, Koss is precluded from
asserting its patents’ claims—now and in the future—and
these appeals are moot.
The question before us is whether the Plantronics dis-
trict court’s invalidation of all claims of the ’155, ’025, and
’934 patents is final, as Bose contends, or was superseded
by Koss’s Second Amended Complaint, as Koss contends.
See Koss I Appellee’s Mot. 4; Koss I Appellant’s Opp. 5. Typ-
ically, when a district court issues a final judgment, any
interlocutory orders merge with that final judgment. For
instance, in Hartley v. Mentor Corp., 869 F.2d 1469, 1472
(Fed. Cir. 1989) (applying Ninth Circuit law), we held that
an interlocutory summary judgment of invalidity merged
with the final stipulation of dismissal with prejudice. In
that case, the district court granted summary judgment
that an asserted patent was invalid. Id. at 1471. When that
summary judgment order issued, it was interlocutory, or
non-final, as litigation was ongoing. Subsequently, the or-
der became final and appealable when it merged with a
stipulated dismissal with prejudice, which concluded liti-
gation. Id. at 1472 (“[I]ssue preclusion is likely to be based
on what was at the time an ‘interlocutory’ ruling, and gen-
erally such orders become finalized upon entry of the judg-
ment in the case.”). Because the patentee neither appealed
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KOSS CORPORATION v. BOSE CORPORATION 8
the summary judgment order, nor sought to have it vacated
by the district court, our court held that the order had pre-
clusive effect in later litigation against a different defend-
ant. Id. at 1472–74.
Koss attempts to distinguish this precedent by arguing
that the district court’s ineligibility ruling became a nullity
on the filing of the Second Amended Complaint. Not so. The
Ninth Circuit has made it clear that claims in prior dis-
missed complaints need not be raised in amended com-
plaints for them to be appealable. Lacey v. Maricopa Cnty.,
693 F.3d 896, 927 (9th Cir. 2012) (“[C]ourts have concluded
that the plaintiff does not forfeit the right to challenge [a]
dismissal on appeal simply by filing an amended complaint
that does not re-allege the dismissed claim.” (quotation
marks omitted)). As the Ninth Circuit explained, a rule re-
quiring repleading is unfair to the parties and the district
court. Id. at 927–28. Consequently, if claims need not be
repleaded to be appealable, then the order dismissing those
claims is not rendered a nullity and merges into the final
judgment. Contrary to Koss’s understanding, its decision
not to reallege all of the dismissed claims in district court
did not alter its ability to appeal the district court’s order
regarding ineligibility as to the claims not realleged (i.e.,
did not render the order an unappealable nullity as to those
claims). What altered Koss’s right to appeal was its own
voluntary decision to dismiss the case with prejudice with-
out reserving a right of appeal.
The same facts that triggered preclusion in Hartley are
present here. The district court’s invalidity order, which
was interlocutory when issued, merged with the final judg-
ment dismissing the case with prejudice. See Headwaters
Inc. v. U.S. Forest Serv., 399 F.3d 1047, 1052 (9th Cir.
2005) (A “stipulated dismissal of an action with prejudice
in a federal district court generally constitutes a final judg-
ment on the merits.”). In other words, while the invalidity
order may not have been final and appealable when it is-
sued in November 2022, it became final and appealable in
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KOSS CORPORATION v. BOSE CORPORATION 9
August 2023 when Koss stipulated to the dismissal of its
suit. And as in Hartley, Koss neither appealed the invali-
dation nor had it vacated. Cf. 869 F.2d at 1473 (“Under
Ninth Circuit law, to be assured that the judgment here
would have no collateral estoppel effect, Hartley would
have had to have the 3M court vacate its order, which he
failed to do . . . .”).
Koss’s patent claims are thus invalid, removing any
case or controversy and rendering these appeals moot. See
Blonder-Tongue Lab’ys, Inc. v. Univ. of Ill. Found., 402 U.S.
313, 339–40 (1971). We, therefore, dismiss.
DISMISSED
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