Trials@uspto.gov
`571.272.7822
`
` Paper No. 6
`
`
` Entered: August 3, 3017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`K/S HIMPP,
`Petitioner,
`
`v.
`
`III HOLDINGS 4, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00783
`Patent 9,191,756 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
` Paper No. 6
`
`
` Entered: August 3, 3017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`K/S HIMPP,
`Petitioner,
`
`v.
`
`III HOLDINGS 4, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00783
`Patent 9,191,756 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`
`I. INTRODUCTION
`A. Background
`K/S HIMPP1 (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–20 of U.S. Patent No. 9,191,756 B2 (Ex. 1001, “the ’756
`patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”). III Holdings
`4, LLC (“Patent Owner”) has not filed a Preliminary Response to the
`Petition.
`An inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a).
`Petitioner shows that there is a reasonable likelihood that it would
`prevail with respect to at least one of the challenged claims. For the reasons
`described below, we institute inter partes review on claims 1–20.
`B. Related Proceedings
`Petitioner has filed numerous petitions requesting review of several
`patents of patent owner. Although they are not necessarily related cases, we
`are aware of IPR2017-00367 (U.S. Patent 8,611,570); IPR2017-00414 (U.S.
`Patent 8,649,538); IPR2017-00466 (U.S. Patent 7,640,101); IPR2017-00496
`
`
`1 An Internet search reveals the acronym K/S HIMPP appears to stand for
`Kommandit/Selskabet Hearing Instrument Manufacturers Patent Partnership.
`Petitioner identifies K/S HIMPP as a real party in interest. Petitioner further
`identifies HIMPP members and affiliates GN Hearing A/S (formerly GN
`Resound A/S), GN Store Nord A/S, IntriCon Corporation, Sivantos GmbH
`and Sivantos Inc., Sivantos GmbH and Sivantos Inc., Sonova Holding AG
`and Sonova AG (formerly Phonak AG), Starkey Laboratories, Inc. (a/k/a
`Starkey Hearing Technologies), Widex A/S, and William Demant Holding
`A/S as real parties in interest. Pet. 2.
`
`
`2
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`(U.S. Patent 8,761,421); IPR2017-00563 (U.S. Patent 6,694,034); IPR2017-
`00564 (U.S. Patent 6,694,034); IPR2017-00781 (U.S. Patent 8,654,999); and
`IPR2017-00782 (U.S. Patent 8,654,999).
`
`
`C. The ’756 Patent
`The ’756 patent is titled “System and Method for Locating a Hearing
`Aid” and issued on November 17, 2015. Ex. 1001, (45), (54).
`
`
`i. Priority
`The ’756 patent claims priority to provisional Application No.
`61/583,902, filed January 6, 2012 (“the ’902 application”). The ’756 patent
`was filed as Application 13/708,140 on December 7, 2012.
`
`
`ii. Disclosure
`The ’756 patent discloses a system for locating lost hearing aids. Id. at
`1:14–15.
`Figure 2 of the ’756 patent is reproduced below.
`
`3
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`
`
`Figure 2 is a pictorial diagram of an embodiment of the ’756 patent.
`Ex. 1001, 1:50–53. Figure 2 illustrates a graphical user interface of a
`hearing aid locator application displayed as a map on the display interface of
`the electronic device. Id.
`As described in the Specification, a hearing aid communicates with an
`electronic device through a wireless communication channel. The electronic
`device inferentially tracks the current location of the hearing aid while the
`communication channel is maintained. The location is inferred from the
`
`4
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`location of the electronic device as it is tethered by the communications
`channel, which is short range. The electronic device executes an application
`that runs in the background and checks the current location of the electronic
`device using a global positioning system (GPS) as the electronic device
`continues to receive communication from the hearing aid. The GPS
`coordinates then are stored as the last known location of the hearing aid in
`the memory of the electronic device. Id. at 2:3–13.
`As discussed above, the electronic device communicates with the
`hearing aid via a short range wireless protocol (such as Bluetooth®) and
`uses a GPS circuit to determine the current location of the electronic device
`and to infer the last known location of the hearing aid from the electronic
`device’s current location. A user also may access the last known location of
`the hearing aid as needed, allowing the user to determine a location where
`the user may have lost the hearing aid. Id. at 2:14–24.
`
`5
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Ground Claims
`Prior Art
`§ 103
`1–5, 7, 9, 10, 12–14, and
`Waters2 and Anderson3
`18–20.
`8
`11, 16, and 17
`6 and 15
`
`
`
`§ 103
`§ 103
`§ 103
`
`Waters, Anderson, and Rajann4
`Waters, Anderson, and Teller5
`Waters, Anderson, Teller, and
`Rajann
`
`
`Petitioner also relies upon the Declaration of Dr. Robert K. Morrow.
`
`Ex. 1003.
`
`
`E. Illustrative Claims
`Claims 1, 12, and 18 are the independent claims and are illustrative of
`the claimed subject matter and are reproduced below:
`1. A smart phone comprising:
`one or more processors; and
`a transceiver coupled to the processor and configurable to
`communicate with a hearing aid through a communication
`channel; and
`a non-transitory computer readable storage medium
`storing hearing aid locator application that, when executed by the
`one or more processors, causes the one or more processors to:
`
`
`2 U.S. Patent Application Publication No. 2003/0008659 A1 (published
`January 9, 2003) (Ex. 1006).
`3 U.S. Patent No. 5,721,783 (issued February 24, 1998) (Ex. 1007).
`4 U.S. Patent Application Publication No. 2010/0273452 (published October
`28, 2010) (Ex. 1009).
`5 U.S. Patent No. 8,810,392 B1 (issued August 19, 2014) (Ex. 1008).
`
`6
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`establish the communication channel with the hearing aid;
`monitor communication channel; and
`periodically store data related to the location of the smart
`phone as the last known location of the hearing aid while the
`communication channel is open.
`12. A portable electronic device comprising:
`
`one or more processors;
`
`
`
`a user interface coupled to the one or more processors to receive
`inputs from a user and to provide information to the user;
`
` a
`
` a
`
` transceiver coupled to the processor to communicate with the
`hearing aid through a communication channel;
`
` position detecting circuit coupled to the one or more processors
`to determine a location of the portable electronic device; and
`
` a
`
` non-transitory computer readable storage medium storing
`instructions that when executed by the one or more processors, cause the
`one or more processors to:
`
`establish the communication channel with the hearing aid;
`
`monitor the communication channel; and
`
`periodically store the location as a last known location of the
`hearing aid, while the communication channel remains open.
`
`18. A method comprising:
`
`establishing a communication channel with a hearing aid at a
`smart phone;
`
`storing time data and location data in a non-transitory computer
`readable storage medium of the smart phone in response to establishing
`the communication channel;
`
`
`7
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`receiving a request for the time data and the location data at a user
`interface of the smart phone; and
`
`providing the time data and location data to the user interface.
`
`Ex. 1001, 6:2–17, 7:9–27, and 8:20–29.
`
`
`II. ANALYSIS
`Claim Construction
`A.
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable construction in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016) (upholding the use of the broadest reasonable interpretation
`approach). Under that standard, and absent any special definitions, we give
`claim terms their ordinary and customary meaning, as they would be
`understood by one of ordinary skill in the art at the time of the invention.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner requests that we define the terms “smart phone” and
`“communication channel.” Pet. 11–14. However, for the purposes of our
`decision, we determine that no claim terms need explicit construction at this
`time. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent
`necessary to resolve the controversy.’” (citation omitted)). The terms are
`easily susceptible to understanding.
`B. Grounds under 35 U.S.C. § 103
`Petitioner contends in four grounds that claims 1–20 are rendered
`obvious by Waters, Anderson, Teller, and Rajann. Pet. 19–62. Petitioner
`
`8
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`also relies upon a Declaration of Dr. Robert K. Morrow for support. See id.
`(citing Ex. 1003).
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented 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.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The ultimate
`determination of obviousness under § 103 is a question of law based on
`underlying factual findings. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362
`(Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966)). These underlying factual considerations consist of: (1) the “level
`of ordinary skill in the pertinent art,”6 (2) the “scope and content of the prior
`art,” (3) the “differences between the prior art and the claims at issue,” and
`(4) “secondary considerations” of non-obviousness such as “commercial
`success, long felt but unsolved needs, failure of others, etc.”7 KSR, 550 U.S.
`at 406 (quoting Graham, 383 U.S. at 17–18).
`
`
`6 Petitioner defines the level of ordinary skill in the art as of January 2012 as
`someone with at least a Bachelor’s degree in electrical engineering,
`computer science, or an equivalent science/engineering degree and at least
`two years of experience in wireless technologies and systems, including
`experience with short-range wireless protocols, or would have at least four
`years of experience in electronic systems design. Pet. 10, citing Ex. 1003
`¶ 30. Patent Owner does not challenge this level at this time. The
`references in the record tend to support a finding that this is the appropriate
`level.
`
`7 The record contains no evidence of secondary considerations at this stage
`of the proceeding.
`
`9
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`
`Waters and Anderson
`Petitioner contends that Waters and Anderson render obvious each of
`claims 1–5, 7, 9, 10, 12–14, and 18–20. Pet. 18–49.
`Waters – Exhibit 1006
`Waters describes a method of locating items. Ex. 1006, [54]. More
`specifically, a mobile telecommunications device is equipped with both
`short range (to form a “piconet”) telecommunications ability and long range
`cellular telecommunications ability. Mobile items of personal property are
`outfitted with transmitters and the items can be lost by an individual. The
`telecommunications devices keep an activity log of the times of existence
`and members of piconets of which they have been members. If a lost item is
`not in the present piconet of a user’s device, the device can backtrack
`through its activity log to find the last piconet for which both it and the
`missing item were members, and can identify from the activity log what
`other devices were present in that particular piconet. Ex. 1006, Abstract.
`The device can then contact the devices and determine whether the
`missing item is presently part of their piconet, and hence can locate the
`missing item if it is present in one of their piconets. The device also may
`geostamp its activity records and/or be aware of its geographical position.
`Id.
`
`Anderson – Exhibit 1007
`Anderson describes a hearing aid with a wireless remote processor.
`Ex. 1007, [54]. The hearing aid or audio communication system includes an
`earpiece that can be hidden in the ear canal and which communicates
`wirelessly with a remote processor unit (“RPU”). The RPU enhances audio
`signals and can be concealed under clothing. Sounds from the environment
`are picked up by a microphone in the earpiece and sent with other
`
`10
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`information over a two-way wireless link to the RPU. Optional secondary
`wireless link circuitry can be used between the RPU and a cellular telephone
`system or other sources of information. Id., Abstract. The RPU may
`provide unsolicited status information about the hearing aid, location, and
`directions. Id. 24:15–44.
`
`Claim 1
`1. A smart phone comprising:
`Petitioner argues that Waters teaches a smart phone. Pet. 19–20.
`We find that, as urged, Waters describes a personal digital assistant
`(“PDA”) with cellular capability. Ex. 1006 ¶ 77. Petitioner asserts that,
`even if a PDA with cellular capability is not a “smart phone,” such would
`have been obvious by 2012. Pet. 20 (citing Dr. Morrow’s Declaration,
`¶¶ 58–62).
`Dr. Morrow appears, in our view, to be qualified to testify to the
`subject matter of this proceeding. Ex. 1003, ¶¶ 2–12 and Appendix A.
`Dr. Morrow testifies that the growth in smartphones between 1993
`and 2012 supports a conclusion that a smart phone is an obvious update to a
`cellular PDA. Id. ¶ 62. Dr. Morrow further buttresses his opinion with
`Exhibits 1014–1016, which discuss the smartphone and its evolution. We
`find this testimony credible and supported by the evidence in the record at
`this time.
`
`one or more processors
` Petitioner argues that Waters describes one or more processors.
`Pet. 21. We find that Waters describes a control processor. Ex. 1006, ¶¶ 77,
`114, and 120.
`
`11
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`a transceiver coupled to the processor and configurable to
`communicate with a hearing aid through a communication channel;
`and
`Petitioner urges that both Waters and Anderson describe this
`limitation. Pet. 21–25.
`More specifically, we find that Waters describes a transceiver coupled
`to a processor and capable of using Bluetooth to communicate with other
`piconet devices. Ex. 1006, ¶¶ 77, 10; Ex. 1003, ¶ 64. On this record we
`accept Dr. Morrow’s testimony that one of ordinary skill in the art would
`understand that the processor controls the transmitter and therefore is
`coupled to it.
`Petitioner also asserts that Waters describes a Bluetooth transceiver
`that is configurable to communicate with a hearing aid through a
`communications channel. Pet. 21. Although Waters expressly describes
`communications with other piconet items—glasses, briefcase, pens,
`electronic items—Petitioner admits Waters does not expressly list a hearing
`aid. Id. 22.
`However, as the short range transceiver of Waters is a Bluetooth
`transceiver, and the ’756 patent utilizes a Bluetooth transceiver as an
`exemplary transceiver configurable to communicate with a hearing aid,
`Petitioner urges that Waters is likewise configurable and one of ordinary
`skill would recognize that the transceiver it could be used to locate any
`device, including a hearing aid. Id. 22–23, citing Dr. Morrow’s testimony
`on this point (Ex. 1003, ¶¶ 66–67). We find this testimony to be credible at
`this stage of the proceeding.
`Petitioner also observes that Anderson describes establishing wireless
`communication between a RPU and a misplaced hearing aid to assist with
`
`12
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`locating the hearing aid. Ex. 1007, 22:3–10, 1:50–55. Similarly, Petitioner
`notes that Waters discloses a system for locating lost items including
`forming a piconet comprising, for example, a mobile telecommunications
`device and several personal devices, and storing the location of the personal
`devices. Pet. 24 (citing Ex. 1006, Abstract).
`Petitioner urges that a person of ordinary skill in the art at the time the
`invention was made would recognize that the transceiver of Waters could be
`used to communicate with hearing aids using a communication channel,
`such as described in Anderson. According to the Petitioner, this person of
`ordinary skill would have been motivated to combine the teachings of
`Waters and Anderson to provide a smart phone that can locate a misplaced
`hearing aid by recording a location where the misplaced hearing aid was last
`seen, as hearing aids were known to be small, expensive, and easy to
`misplace. Id. Dr. Morrow’s testimony supports these points and is credible
`at this time. Ex. 1003, ¶¶ 67–69.
`a non-transitory computer readable storage medium storing
`hearing aid locator application that, when executed by the one or
`more processors, causes the one or more processors to:
`Petitioner asserts that Waters and Anderson describe a hearing aid
`locator program with a hearing aid locator application. Pet. 25–27.
`We find that at least Waters describes a data carrier having a program
`encoded upon it. Ex. 1006 ¶ 63. It also appears to us that Anderson has the
`same feature in that a user may activate a search mode program. Ex. 1007
`22:3–8.
`
`establish the communication channel with the hearing aid
`Petitioner urges that Waters and Anderson describe establishing
`a communications channel with the hearing aid. Pet. 27. We find that
`
`13
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`Waters describes establishing the communication channel between the
`mobile telecommunications device and another piconet device.
`Ex. 1006 ¶¶0075-0076. At this time we find credible the testimony
`of Dr. Morrow that one of ordinary skill in the art would have
`recognized that the device in Waters could be a hearing aid, as
`described in Anderson. Ex. 1003 ¶ 73.
`monitor [the] communication channel; and
`Petitioner urges that Waters and Anderson teach monitoring the
`communication channel between the hearing aid and the smart phone.
`Pet. 28. We find that Waters teaches monitoring the piconet.
`Ex. 1006 ¶¶ 49 and 114. We also, as noted above, find credible the
`testimony that the devices monitored in Waters could include a
`hearing aid, such as disclosed in Anderson.
`periodically store data related to the location of the
`smart phone as the last known location of the hearing
`aid while the communication channel is open.
`Petitioner asserts Waters and Anderson disclose this element.
`Pet. 28–30.
`We find that Waters describes that the location of the smart
`phone may be stored as the last known location of a device. Ex. 1006
`¶24. Such records may be stored as activity logs. Id. ¶25. We also
`agree that the device may be a hearing aid as taught by Anderson.
`Ex. 1003 ¶79.
`At this stage in the proceeding, we find Petitioner’s arguments,
`references, and testimony of Dr. Morrow compelling. Accordingly, on this
`record, we are persuaded by Petitioner that Waters and Anderson render
`claim 1 obvious. We, thus, determine that the Petition shows that there is a
`
`14
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`reasonable likelihood that claim 1 is rendered obvious by Waters and
`Anderson.
`
`
`Claim 2
`
`Claim 2 depends directly from claim 1 and recites that “the hearing
`aid locator application, when executed by the one or more processors,
`further causes the one or more processors to store the time data with the data
`related to the location as the last known time of the hearing aid.” Ex. 1001,
`6:18–22.
`Petitioner contends Waters and Anderson describe this limitation.
`Pet. 30–31. We find that Waters describes that the piconet activity log has
`details of the time and members of the group. Ex. 1006 ¶ 114. We, thus,
`determine that the Petition shows that there is a reasonable likelihood that
`claim 2 is rendered obvious by Waters and Anderson.
`Claim 3
`Claim 3 depends directly from claim 1 and recites additional
`elements. Ex. 1001, 6:24–31.
`a user interface coupled to the one or more processors to
`receive inputs from a user and to provide information to
`the user; and
`Petitioner asserts that Waters and Anderson describe these additional
`
`elements. Pet. 31–32.
`Waters describes different devices including a mobile telephone,
`laptop computer, and PDA. Ex. 1006 ¶43. These devices include a key pad
`and a display screen coupled to one or more processors that appear to
`receive inputs from the user and provide information to the user. Id. ¶77
`
`15
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`wherein the hearing aid locator application, when executed
`by the one or more processors, further causes the one or
`more processors to:
`display the last known location on the user interface.
`Petitioner asserts that Waters and Anderson disclose this limitation.
`Pet. 32–34.
`Waters describes communicating the last known location of a missing
`item on a display to a user requesting the search. Ex. 1006 ¶¶ 31, 98, and
`Figure 4.
`We, thus, determine that the Petition shows that there is a reasonable
`likelihood that claim 3 is rendered obvious by Waters and Anderson.
`Claim 4
`Claim 4 depends directly from claim 1. Claim 4 adds the further
`
`limitation of “wherein the hearing aid locator application, when executed by
`the one or more processors, further causes the one or more processors to:
`store data related to the location in response to receiving data from the
`hearing aid over the communication channel.” Ex. 1001 6:32–37.
`Petitioner asserts that Waters and Anderson disclose the hearing aid
`locator application causing the storing of data related to the location in
`response to receiving data from the hearing aid over the communication
`channel. Pet. 34–36.
`We find that Waters describes the storage of an activity log that
`includes time and location data for piconet devices at the time that a piconet
`exists or members join or leave the piconet or periodically. Ex. 1006 ¶¶ 22,
`114–115. Dr. Morrow testifies that this is equivalent to when
`
`16
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`communications are received. Ex. 1003 ¶¶ 85–86. This testimony is
`credible on this record.
`We, thus, determine that the Petition shows that there is a reasonable
`likelihood that claim 4 is rendered obvious by Waters and Anderson.
`Claim 5
`Claim 5 depends directly from claim 1. Claim 5 adds the further
`
`limitation of “the hearing aid locator application, when executed by the one
`or more processors, further causes the one or more processors to: update the
`data related to the location in response to losing communicating with the
`hearing aid.” Ex. 1001, 6:38–42.
`Petitioner asserts that Waters and Anderson disclose the hearing aid
`locator application causing the storing of data related to the location in
`response to losing communication with the hearing aid. Pet. 36–37.
`We find that Waters describes that a control processor automatically
`records a piconet device joining or leaving the piconet and timestamps and
`may location stamp that event. Ex. 1006 ¶¶ 22, 114.
`We, thus, determine that the Petition shows that there is a reasonable
`likelihood that claim 5 is rendered obvious by Waters and Anderson.
`Claim 7
`Claim 7 depends directly from claim 1. Claim 7 adds the further
`
`limitation of “a speaker coupled to the one or more processors; and wherein
`the hearing aid locator application, when executed by the one or more
`processors, further causes the one or more processors to: cause the speaker
`
`17
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`to play tones in response to losing the communication with the hearing aids.”
`Ex. 1001, 6:50–58.
`Petitioner asserts that Waters and Anderson disclose the hearing aid
`speaker making a sound in response to losing communication. Pet. 37–38.
`We find that Waters describes a controller that generates a tone
`whenever an item from an associated piconet leaves the group. Ex. 1006
`¶ 49.
`
`We thus determine that the Petition shows that there is a reasonable
`likelihood that claim 7 is rendered obvious by Waters and Anderson.
`Claims 9 and 10
`Claim 7 depends directly from claim 1. Claim 9 adds the further
`
`limitation of “a position detecting circuit coupled to the one or more
`processors to determine the data related to the location of the smart phone.”
`Ex. 1001 6:62–64. Claim 10 requires the position detecting circuit to be a
`global positioning system. Id. at 6:65–67.
`Petitioner asserts that Waters and Anderson disclose the position
`detecting circuit and GPS. Pet. 38–39.
`We find that Waters describes GPS. Ex. 1006 ¶ 41.
`We thus determine that the Petition shows that there is a reasonable
`likelihood that claims 9 and 10 are rendered obvious by Waters and
`Anderson.
`
`Claims 12–14 and 18–20
`Claim 12 is a device claim reciting similar limitations to claim 1, and
`
`Claim 18 is a method claim reciting method steps performed by device of
`claim 12 and smart phone of claim 1. Ex. 1001 7:9–8:36. Dependent claims
`13–14 contain similar limitations as claim 5 and claims 19–20 contain
`
`18
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`similar limitations as claims 2–3 as more specifically discussed in the
`Petition at pages 41–42 and 47–49.
`Petitioner asserts that Waters and Anderson render obvious these
`claims, for essentially the same reasons already discussed herein. Pet. 40–
`49.
`
`Based on the Petitioner’s arguments and evidence presented, we
`determine that the Petition shows that there is a reasonable likelihood that
`claims 12–14 and 18–20 are rendered obvious by Waters and Anderson.
`Waters, Anderson, and Rajann (Ex. 1009)
`Petitioner asserts that claim 8 is rendered obvious by the combination
`of Waters, Anderson, and Rajann (Ex. 1009).
`Rajann
`Rajann describes a method and apparatus for facilitating location of a
`targeted wireless communications device. Ex. 1009, Abstract. The
`apparatus is capable of locating and tracking a wireless device which may
`have been lost or stolen. Id. ¶ 3.
` Claim 8
`Claim 8 depends from claim 7 and adds the further limitation of
`
`“wherein rate of the tones is increased as a signal strength of the
`communication channel increases.” Ex. 1001 6:59–61.
`Petitioner asserts that an increasing beeping rate was known in the art
`when wirelessly tracking devices as demonstrated by Rajann and as such
`obvious to utilize. Pet. 49–51.
`We find that Rajann describes tracking devices in a wireless system.
`Ex. 1009 ¶ 3. We also find that Rajann describes increasing the beeping as
`the hunt gets “warmer” for the lost device. Id. ¶ 43. Dr. Morrow testifies
`
`19
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`that one of ordinary skill in the art would be motivated to use this technique
`for finding lost items. Ex. 1003 ¶¶ 113–115. We credit this testimony.
`We thus determine that the Petition shows that there is a reasonable
`likelihood that claim 8 is rendered obvious by Waters, Anderson, and
`Rajann.
`
`Waters, Anderson, and Teller (Ex. 1008)
`Petitioner asserts claims 11, 16, and 17 are rendered obvious by the
`combination of Waters, Anderson, and Teller (Ex. 1008).
`Teller
`Teller describes methods and systems for monitoring the presence of
`items based on context. Teller describes determining a context for a given
`user and setting a proximity framework between a monitoring device and
`one or more items based on the determined user context. The framework
`can include proximity requirements. Ex. 1008, Abstract.
`Claim 11
`Claim 11 depends from claim 1 and adds the further limitation of “a
`
`network interface coupled to the processor and configured to communicate
`with a network; and wherein the hearing aid locator application, when
`executed by the one or more processors, further causes the one or
`more processors to: provide the last known location to a server through the
`network.” Ex. 1001, 7:1–8.
`Waters describes a mobile device which can communicate with a
`network. Ex. 1006 ¶ 21. We also find credible Dr. Morrow’s testimony that
`the network would be understood by one of ordinary skill to include the
`Internet. Ex. 1003 ¶¶ 117–118. We also find Teller expressly describes that
`its monitoring device may communicate with servers or other computing
`devices via a mobile telecommunications network or other wireless
`
`20
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`telecommunications networks. Ex. 1008 8:45–9:9. We at this time are
`persuaded by Dr. Morrow’s testimony as to the benefits of allowing
`communications over a larger network to assist in finding items. Ex. 1003
`¶¶ 124–125.
`We thus determine that the Petition shows that there is a reasonable
`likelihood that claim 11 is rendered obvious by Waters, Anderson, and
`Teller.
`
`Claims 16 and 17
`Claim 16 depends from claim 12 and adds the further limitation of
`
`“wherein the instructions, when executed by the one or more processors,
`further cause the one or more processors to: attempt to re-establish the
`communication channel with the hearing aid in response to losing the
`communication; and provide an alert to the user interface if the
`communication channel is not re-established.” Ex. 1001, 8:10–17. Claim 17
`adds the limitation that the alert include the last known location. Id. 8:18–
`19.
`Petitioner asserts that Waters, Anderson, and Teller describe these
`
`limitations. Pet. 56–58.
`We find that Teller describes a monitoring device to monitor an item
`and issue an alert if an item is not detected. Two attempts are required
`before an alert is generated. Ex. 1008, 10:41–43, and Figure 4. We accept
`Dr. Morrow’s testimony that this equates to attempting to reestablish
`communications. Ex. 1003 ¶ 128. We also accept his testimony that one of
`ordinary skill in the art would do this to avoid false alarms. Id. ¶ 129.
`
`21
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`Finally, we find that Waters describes providing an alert that includes a last
`known location. Ex. 1006 ¶ 31.
`We thus determine that the Petition shows that there is a reasonable
`likelihood that claims 16 and 17 are rendered obvious by Waters, Anderson,
`and Teller.
`
`Waters, Anderson, Teller, and Rajann
`Petitioner asserts that claims 6 and 15 are rendered obvious by the
`combination of Waters, Anderson, Teller and Rajann. Pet. 59–62.
`Claim 6
`Claim 6 depends from claim 5, and adds the limitation that “wherein
`the hearing aid locator application, when executed by the one or more
`processors, further cause the one or more processors to: attempt to re-
`establish the communication channel with the hearing aid; and cause the
`hearing aid to play a tone in response to the communication channel being
`re-established.” Ex. 1001 6:44–50.
`Petitioner asserts that it would have been obvious to a person of
`ordinary skill in the art to have the lost item play a tone upon the
`communications channel being reestablished. Pet. 60.
`We find that Waters describes devices that beep when they receive an
`electromagnetic trigger signal. Ex. 1006 ¶2. Rajann also describes playing
`an audible alert once in a search area. Ex. 1009 ¶¶ 42–43. We accept
`Dr. Morrow’s testimony that one of ordinary skill would be motivated to add
`the playing of a tone to aid in finding the device. Ex. 1003 ¶ 136. Claim 15
`contains substantially the same limitations as claim 6.
`We, thus, determine that the Petition shows that there is a reasonable
`likelihood that claims 6 and 15 are rendered obvious by Waters, Anderson,
`Teller, and Rajann.
`
`22
`
`
`
`IPR2017-00783
`Patent 9,191,756 B2
`
`Additional Observation
`We note that the petition does not particularly address the Supreme
`
`Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 406.
`We find that, on the present record, the claimed subject matter appears
`to take conventionally known devices and methods, combine them, and each
`performs its known function, as outlined in the above rationale, and as
`provided by Pet
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
