Two Patents Involved are In WDTX Suit to review Apple’s PTAB
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The Two Patents Involved are In WDTX Suit to review Apple’s PTAB
The Patent Trial and Appeal Board has approved the review of two wireless headset patents challenged by Apple, giving the tech company a boost in its bid to fend off an infringement lawsuit from headset manufacturer Koss in the western district of Texas.
In a few decisions on Thursday, the PTAB rejected Koss Corp.’s argument. that the board should use its discretion to deny the petitions as the Texas case goes to trial on April 18, 2022, about one to two months earlier. final decisions should be made in the PTAB cases. But the board said the proximity of the trial date only marginally weighs in favor of denial in light of “at least some convincing evidence that delays are possible.”
Some of that evidence included a magazine article that Apple Inc. filed a lawsuit stating that 70% of the trial dates in patent cases in the Western District of Texas that the council has relied on to deny patent reviews have been pushed back.
“In this case, we cannot ignore the substantial uncertainty in the April 18, 2022 date and the fact that it is 10 to 11 months from now and a lot could change during this time,” the PTAB said. “Whether the Texas court trial takes place before, concurrently with, or after our… final written decision statutory term implies substantial speculation.”
The board said the proximity of the trial date “at best” only minimally favors denial. As for the other five factors set forth in its preliminary decision in Apple v. Fintiv, which the board considers when deciding whether to review a patent when there are parallel lawsuits, the board said the other factors on balance promote the revision of patents.
For starters, Apple has filed its petition urgently — five weeks after receiving Koss’ infringement claims in the Texas case — and the parallel Texas lawsuit has made “very little investment” in disability issues, the board said.
“Right now, we see little evidence of the risk of duplicating the work done in the Texas case or producing inconsistent results if we go to trial,” the PTAB said.
While the Texas case is still in its early stages and it’s difficult to determine how much overlap there could be in the two locations, the board said a provision from Apple has raised concerns about duplication of work. taken away. Given that U.S. district judge Alan Albright has ordered Koss to limit the alleged claims, the council said it’s likely there will be some claims in dispute before the council that are not involved in the Texas case.
Koss filed a lawsuit in July in the Western District against Apple, Bose and three other companies for alleging infringement of five patents, including the two at issue in Thursday’s PTAB decisions. Koss claims it was the first to develop the wireless headphone concept through its line of Striva products.
The company said in the suits that Tony Bennett, Les Brown and Frank Sinatra Jr. Koss headphones, and that Koss’s official spokespersons included Mel “The Velvet Fog” Tormé and Doc Severinsen, the leader of Johnny Carson’s “Tonight Show.” band.
Apple tried to transfer the case to the Northern District of California, but Judge Albright rejected the transfer motion in April.
Apple had previously filed for damages with the Federal Circuit over the transfer issue, but the appeals court dismissed the company. The court cited a permanent injunction issued by Judge Albright in March, a day after Apple filed the mandamus petition, pledging to review the transfer bids before claiming the construction hearings.
Apple’s counsel declined to comment, while Koss’s counsel did not immediately return a request for comment on Friday.
The patents in the pack are U.S. Patent Nos. 10,298,451 and 10,506,325.
Administrative Patent Judges David C. McKone, Gregg I. Anderson, and Norman H. Beamer sat on the panels.
Apple is represented by Karl Renner, Roberto Devoto and Ryan Chowdhury of Fish & Richardson PC.
Koss is represented by Mark G. Knedeisen, Laurén Shuttleworth Murray, Ragae M. Ghabrial, Brian P. Bozzo and Michelle Weaver of K&L Gates LLP.
The business is Apple Inc. v. Koss Corp., case numbers IPR2021-00255 and IPR2021-00305, before the Patent Trial and Appeal Board.
–Additional reporting by Craig Clough, Dani Kass, Andrew Karpan and Dave Simpson. Editing by Aaron Pelc.
Read more at: https://www.law360.com/technology/articles/1391060/apple-gets-ptab-to-review-2-patents-involved-in-wdtx-suit?copied=1
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