Koss Corporation v. Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
KOSS CORPORATION,
Appellant
v.
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2022-2091, 2022-2115
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021-
00305, IPR2021-00381.
______________________
Decided: July 31, 2024
______________________
MARK G. K NEDEISEN, K&L Gates LLP, Pittsburgh, PA,
argued for appellant. Also represented by RAGAE
G HABRIAL , L AUREN S. MURRAY , CHRISTOPHER MICHAEL
VERDINI, M ICHELLE W EAVER .
MICHAEL S. F ORMAN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
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2 KOSS CORPORATION v. VIDAL
argued for intervenor. Also represented by BENJAMIN T.
HICKMAN, F ARHEENA YASMEEN RASHEED.
______________________
Before H UGHES , STOLL , and CUNNINGHAM , Circuit Judges.
HUGHES , Circuit Judge.
In this consolidated appeal, Koss Corp. appeals the Pa-
tent Trial and Appeal Board’s decisions in IPR2021-00305
and IPR2021-00381, which found claims 1–4, 9, 10, and 14–
17 of U.S. Patent No. 10,506,325 and claims 1–5 and 14–18
of U.S. Patent No. 10,491,982 unpatentable under 35
U.S.C. § 103. Both patents are assigned to Koss Corp. The
two patents, which disclose various types of wireless ear-
phones, have identical written descriptions and figures.
For the reasons stated below, we dismiss Koss Corp.’s ap-
peal as to U.S. Patent No. 10,506,325 and affirm the
Board’s decision as to U.S. Patent No. 10,491,982.
I. T HE ’325 P ATENT
In November 2022, after Koss Corp. (Koss) filed a
timely notice of appeal for IPR2021-00305, a district court
infringement action invalidated U.S. Patent
No. 10,506,325 (the ’325 patent) after finding the chal-
lenged claims ineligible under 35 U.S.C. § 101. See Koss
Corp. v. Plantronics Inc., No. 21-cv-03854-JST, 2022 WL
19975244, at *1, *9 (N.D. Cal. Nov. 16, 2022). That same
district court order, after finding the challenged claims in-
valid under § 101, also invalidated the claims of at least
three other Koss patents for wireless earphones—U.S. Pa-
tent 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), none of which are at issue
in this appeal. Id.
Like the ’325 patent at issue here, Koss also filed ap-
peals with this court challenging three inter partes review
(IPR) decisions in which the Board held certain claims of
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KOSS CORPORATION v. VIDAL 3
the ’155, ’934, and ’025 patents unpatentable. See Appeal
Nos. 23-1173, 23-1179, 23-1180, 23-1191. Koss’ appeals re-
lated to the ’155, ’934, and ’025 patents were consolidated
into a single appeal before this court. See Koss Corp. v.
Bose, No. 22-2090 (Fed. Cir. July 19, 2024). In that consol-
idated appeal, this court recently dismissed each of the un-
derlying appeals as moot “[b]ecause all the claims in the
patents at issue were invalidated in prior district court lit-
igation.” Id., slip op. at 2. (dismissing as moot Appeal Nos.
22-2090, 23-1173, 23-1179, 23-1180, and 23-1191). As those
claims were found invalid in the same district court order,
we find the mootness issue in Koss Corp. v. Bose dispositive
here. Id. Therefore, with respect to the ’325 patent, we dis-
miss the appeal as moot.
II. T HE ’982 P ATENT
A
U.S. Patent No. 10,491,982 (the ’982 patent) describes
wireless earphones that can receive and play streamed dig-
ital audio content via wireless networks. ’982 patent at
2:64–66, 3:7–10. Each earphone has a body with a down-
wardly extending elongated portion and an earbud portion
that is inserted into the user’s ear canal. Id. at 3:16–27,
3:54–56, 18:14–28. To receive and play the streamed con-
tent, each wireless earphone comprises a “transceiver cir-
cuit,” which may be implemented as a single integrated
circuit—such as a system-on-chip (SOC)—and may be
housed in the body portion of the earphone. Id. at 3:40–46,
6:34–49.
The ’982 patent includes twenty claims, with claim 1
being the sole independent claim. Claim 1 recites:
1. A system comprising:
headphones comprising a pair of first and second
wireless earphones to be worn simultaneously by
a user, wherein the first and second earphones
are separate such that when the headphones are
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4 KOSS CORPORATION v. VIDAL
worn by the user, the first and second earphones
are not physically connected, wherein each of the
first and second earphones comprises:
a body portion that comprises:
a wireless communication circuit for re-
ceiving and transmitting wireless sig-
nals;
a processor circuit in communication with
the wireless communication circuit; and
an ear canal portion that is inserted into
an ear of the user when worn by the
user; and
at least one acoustic transducer connected
to the processor circuit; and
an elongated portion that extends away from the
body portion such that the elongated portion
extends downwardly when the ear canal por-
tion is inserted in the ear of the user;
a microphone connected to the processor circuit
and for picking up utterances of a user of the
headphones;
an antenna connected to the wireless communi-
cation circuit; and
a rechargeable power source; and
a mobile, digital audio player that stores digital au-
dio content and that comprises a wireless trans-
ceiver for transmitting digital audio content to the
headphones via Bluetooth wireless communica-
tion links, such that each earphone receives and
plays audio content received wirelessly via the
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KOSS CORPORATION v. VIDAL 5
Bluetooth wireless communication links from the
mobile, digital audio player.
Id. at 18:8–40.
B
Apple Inc. petitioned for IPR of claims 1–5 and 14–20
of the ’982 patent, challenging patentability under 35
U.S.C. § 103. Apple asserted six different grounds for obvi-
ousness, with each ground containing a combination of at
least prior art references Rosener1 and Hankey.2 Rosener
relates to wireless communication between an external
data or audio device, such as a cell phone or MP3 player,
and two earphones, with a focus on wireless earbuds. J.A.
75. Hankey describes a headset within a small compact
unit, specifically describing techniques for integrating elec-
tronic components into the limited space of a headset’s ear-
bud and primary housing body. J.A. 77. For its proposed
combination, Apple “relie[d] on Rosener as teaching two
earpieces/ earphones . . . in wireless communication with
an audio source,” while relying on Hankey to “provide[]
techniques to package electronics within a small compact
unit to alleviate the size and shape hassles of conventional
headsets.” J.A. 80–81 (internal quotations omitted).
The Board instituted IPR on the challenged claims, and
after a hearing, issued a final written decision holding
claims 1–5 and 14–18 unpatentable and claims 19 and 20
not unpatentable. See Apple Inc. v. Koss Corp., No.
IPR2021-00381, 2022 WL 2314983 (P.T.A.B. June 27,
2022). In relevant part, the Board found that “a person of
ordinary skill in the art would have had reason to combine
Hankey’s ‘small form factors’ with Rosener’s earphones.”
J.A. 82. Koss appeals. Apple withdrew from the appeal and
the Director of the United States Patent and Trademark
1 U.S. Patent App. Pub. No. 2008/0076489.
2 U.S. Patent App. Pub. No. 2008/0166001.
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6 KOSS CORPORATION v. VIDAL
Office (USPTO) intervened pursuant to 35 U.S.C. § 143 to
defend the Board’s decision. We have jurisdiction under 35
U.S.C §§ 141–44, 319, and 28 U.S.C. § 1295(a)(4)(A).
C
An appellant has the burden to prove the existence of
harmful error. In re Watts, 354 F.3d 1362, 1369 (Fed. Cir.
2004). Obviousness is a question of law based on underly-
ing facts. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1326
(Fed. Cir. 2016). We review the Board’s ultimate determi-
nation of obviousness de novo and its underlying factual
findings for substantial evidence. See Pers. Web Techs.,
LLC v. Apple, Inc., 848 F.3d 987, 991 (Fed. Cir. 2017) (cit-
ing In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)).
What a reference teaches and whether a person of ordinary
skill would have been motivated to combine references are
questions of fact. In re Constr. Equip. Co., 665 F.3d 1254,
1255 (Fed. Cir. 2011). Likewise, whether a skilled artisan
would have had a reasonable expectation of success in mak-
ing the claimed invention is a question of fact. Intelligent
Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
1366 (Fed. Cir. 2016).
Substantial evidence is “such relevant evidence as a
reasonable mind might accept as adequate to support” the
conclusion reached. Consol. Edison Co. v. NLRB, 305 U.S.
197, 229 (1938).
On appeal, Koss argues that the Board made erroneous
legal conclusions and factual findings with respect to inde-
pendent claim 1 of the ’982 patent. According to Koss, these
alleged errors warrant reversal of the Board’s decision. We
disagree.
Koss argues that with respect to claim 1, the Board
made two erroneous factual findings that are unsupported
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KOSS CORPORATION v. VIDAL 7
by substantial evidence.3 Appellant’s Br. 47. Koss chal-
lenges the Board’s finding of a motivation to combine and,
specifically, its conclusions that (1) Rosener and Hankey
would have supplied all information that a person of ordi-
nary skill in the art would need to make the claimed inven-
tion because Rosener and the ’982 patent had “the same
level of disclosure,” and (2) the challenged claims do “not
include limitations regarding design and operability.” Ap-
pellant’s Br. 47 (quoting J.A. 87). We conclude that sub-
stantial evidence supports the Board’s relevant findings.
As discussed above, Apple’s proposed combination of
Rosener and Hankey “relie[d] on Rosener as teaching two
earpieces/earphones . . . in wireless communication with
an audio source.” J.A. 80 (internal quotations omitted).
During its obviousness analysis in view of the proposed
combination of Rosener and Hankey, the Board determined
that the ’982 patent includes the same level of disclosures
for which Apple relied on Rosener (i.e., two wireless ear-
phones communicating with an audio source). J.A. 87. This
finding is supported by substantial evidence. As the Board
stated:
We are not persuaded that the design and opera-
tional issues raised by Patent Owner would have
precluded a person of ordinary skill in the art from
understanding the references and any differences
between the references and claim 1. Patent Owner
does not allege the references teach away from the
combination.
J.A. 88.
The Board’s determination that claim 1 does “not in-
clude limitations regarding design and operability” is not,
3 Koss does not separately challenge the Board’s fac-
tual findings regarding the other claims, so we treat claim
1 as representative.
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8 KOSS CORPORATION v. VIDAL
as Koss urges, an “erroneous factual finding.” J.A. 87; Ap-
pellant’s Br. 47. The scope and meaning of a claim is a
claim construction inquiry and thus a legal question. See,
e.g., Google LLC v. EcoFactor, Inc., 92 F.4th 1049, 1054,
1056 (Fed. Cir. 2024). We conclude that any error in the
Board’s statement is harmless error, however. See In re
Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004) (“the harmless
error rule applies to appeals from the Board”); Micrografx,
LLC v. Google Inc., 672 F. App’x 988, 991 (Fed. Cir. 2016).
The Board made this statement in the context of “what the
combined teachings of the references would have suggested
to those of ordinary skill in the art” and “the design and
operational issues raised by [Koss],” J.A. 87–88, and sub-
stantial evidence supports the Board’s finding that “design
and implementation details of the headphones would have
been well-known.” J.A. 86. The Board credited expert tes-
timony that: (1) an engineer seeking to implement “an au-
dio transducer or equivalent to the speaker technology”
would have “many references to describe the operation of
such an element,” J.A. 8717–18 at 38:3–9, 39:8–17; and
(2) “there was publicly available information about the
properties, characteristics, and uses of” transducers,
J.A. 7616–18 at 192:13–194:7.
Finally, Koss argues that the Board legally erred by cit-
ing In re Keller during its obviousness analysis. Appellant’s
Br. 32, 45–47; see also In re Keller, 642 F.2d 413 (CCPA
1981). But the Board cited In re Keller to support its state-
ment that “the test [for obviousness] is what the combined
teachings of the references would have suggested to those
of ordinary skill in the art.” J.A. 86–87 (citing In re Keller,
642 F.2d at 425). That is a correct statement of the law and
not error.
III
We have considered Koss’ remaining arguments and
find them unpersuasive. Because we do not find any legal
or factual errors, we affirm the Board’s decision as to the
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KOSS CORPORATION v. VIDAL 9
’982 patent. And because we find this court’s recent deci-
sion in Koss v. Bose, No. 22-2090 dispositive here, we dis-
miss as moot the appeal as to the ’325 patent.
DISSMISSED-IN-PART, AFFIRMED-IN-PART
COSTS
No costs.
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