`
`Paper No. 40
`Date Filed: June 26, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`
`BEFORE THE PATENT AND TRIAL APPEAL BOARD
`____________________________
`
`OTICON MEDICAL AB; OTICON MEDICAL LLC;
`WILLIAM DEMANT HOLDING A/S,
`
`Petitioner
`
`v.
`
`COCHLEAR BONE ANCHORED SOLUTIONS AB
`
`Patent Owner
`____________________________
`
`Case No. IPR2017-010181
`U.S. Patent No. 7,043,040 B2
`____________________________
`
`
`PETITIONER'S REPLY TO PATENT OWNER'S SUPPLEMENTAL
`RESPONSE ADDRESSING CLAIMS 7-10
`
`
`1 Case No. IPR2017-01019 has been consolidated with the instant proceeding. To
`avoid confusion, certain papers are cited herein using Number "-01018" (e.g.,
`"-01018 Pet.") to distinguish from papers associated with IPR2017-01019.
`
`
`
`
`IPR2017-01018 - Petitioner's Reply to Supplemental Response
`U.S. Patent No. 7,043,040
`
`
`TABLE OF CONTENTS
`
`IV.
`
`TABLE OF AUTHORITIES .................................................................................... ii
`I.
`Argument Summary ........................................................................... 1
`II.
`Claim Construction Issues ................................................................. 1
`III.
`Claims 7, 9 - Unpatentable over Vaneecloo, Carlsson and Leysieffer
` ........................................................................................................... 2
`Claim 8 - Unpatentable Over Vaneecloo, Carlsson, Leysieffer,
`Schaefer ............................................................................................. 5
`Claim 10 - Unpatentable over Vaneecloo, Carlsson, Leysieffer,
`Lesinski ............................................................................................. 6
`Conclusion ......................................................................................... 7
`VI.
`CERTIFICATE OF PAGE COUNT .......................................................................... 8
`
`
`V.
`
`i
`
`
`
`IPR2017-01018 - Petitioner's Reply to Supplemental Response
`U.S. Patent No. 7,043,040
`
`
`TABLE OF AUTHORITIES
`
`Cases
`In re Keller, 642 F.2d 413 (CCPA 1981) .................................................................. 6
`In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986) .......................................... 6
`In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012) .......................................................... 7
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................... 3
`Tokai Corp. v. Easton Enters., 632 F.3d 1358 (Fed. Cir. 2011) ................................ 7
`
`ii
`
`
`
`IPR2017-01018 - Petitioner's Reply to Supplemental Response
`U.S. Patent No. 7,043,040
`
`I.
`
`Argument Summary
`
`
`
`Patent Owner's Supplemental Response ("Supp. Resp.") does not dispute
`
`that claims 7-10 broadly recite aspects of hearing aid technology that were well
`
`known prior to the critical date. Indeed, the broad language of claims 7-10 no more
`
`than mirrors a single sentence of the '040 patent description, which provides no
`
`technical detail whatsoever. Any attempt to practice claims 7-10 would, at best,
`
`rely entirely on teachings of the prior art and knowledge in the public domain.
`
`Patent Owner attempts to distract from the straight-forward combinations of the
`
`instituted grounds by mischaracterizing the state of the art and by engaging in
`
`obviousness analysis that is contrary to law.
`
`II. Claim Construction Issues
`
`Patent Owner offers these constructions: "digital signal processing means"
`
`(claim 7) – as meaning "a digital signal processor"; "the signal processing means
`
`adapts frequency characteristics" (claim 8) – meaning the "digital signal processing
`
`means" of claim 7, with the rest of the claim being interpreted in accordance with
`
`its ordinary meaning; "signal processing means for actively counteracting acoustic
`
`feed-back problems in the apparatus" (claim 9) – meaning "a digital signal
`
`processor configured to actively counteract acoustic feedback problems in the
`
`apparatus"; and "directivity means" (claim 10) – meaning "a directivity dependent
`
`microphone and/or digital signal processor." Supp. Resp. at 3-5.
`
`1
`
`
`
`IPR2017-01018 - Petitioner's Reply to Supplemental Response
`U.S. Patent No. 7,043,040
`
`
`For purposes of this IPR proceeding only, and without waiver of its right to
`
`argue for indefiniteness in district court, Petitioner respectfully submits that the
`
`Board can and should properly address the instituted grounds for claims 7-10 based
`
`on Patent Owner's broad constructions.
`
`III. Claims 7, 9 - Unpatentable over Vaneecloo, Carlsson and Leysieffer
`
`Claim 7 recites: "… wherein the electronic circuitry [or claim 6] comprises
`
`digital signal processing means." With respect to claim 6, the Board recognized
`
`that "modifying the BAHA device of Vaneecloo and Carlsson to include an
`
`analog-to-digital converter as taught by Leysieffer would have been obvious to a
`
`skilled artisan, inter alia, to obtain advantages associated with digital
`
`processing…." See -01018 Inst. Dec'n at 25 (emphasis added). This conclusion is
`
`fully supported by the record and clearly extends to the "digital signal processing
`
`means" broadly recited in claim 7. The '040 patent fails to disclose any specific
`
`DSP circuitry, and both experts in this case have acknowledged that benefits of
`
`digital processing in hearing aid devices were known prior to the critical date. Ex.
`
`1121, 49:8-51:5, 57:23-58:18, 60:16-21; Ex. 1002, ¶¶ 155-156, 158-162, 164.
`
`Nonetheless, Patent Owner illogically asserts that a POSA would not "have
`
`been motivated to modify [a BAHA] to include a DSP because there would be no
`
`reason to do so." Supp. Resp. at 5-6. Patent Owner more specifically alleges that
`
`including a DSP in a BAHA would only be beneficial "(1) if sending sound
`
`2
`
`
`
`IPR2017-01018 - Petitioner's Reply to Supplemental Response
`U.S. Patent No. 7,043,040
`
`vibrations to the auditory nerve of an injured cochlea like air conduction hearing
`
`aids do, (2) if addressing feedback which is a frequent problem in air conduction
`
`hearing aids, and (3) if addressing the effects of a patient's skull characteristics
`
`(transcranial attenuation "TA") as identified in the '040 patent." Supp. Resp. at 6-8.
`
`Patent Owner's argument is fatally flawed for several reasons.
`
`First, Patent's Owner's argument is at odds with the broad scope of claim 7.
`
`Under proper obviousness analysis, "neither the particular motivation nor the
`
`avowed purpose of the patentee controls." Instead, "[w]hat matters is the objective
`
`reach of the claim." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
`
`Second, Patent Owner's argument that a DSP could only be beneficial in the three
`
`identified instances is incorrect. The benefits of digital signal processing in
`
`general, and in hearing aids specifically, were well known and previously
`
`acknowledged by both Dr. Popelka and Dr. Rubenstein. Ex. 1121, 49:8-51:5,
`
`57:23-58:18, 60:16-21; Ex. 1002, ¶¶ 155-156, 158-162, 164. Benefits of
`
`incorporating a DSP in hearing aid devices have been recognized since at least the
`
`mid 1980's (Ex. 1129, generally including 3:3-19), and major hearing aid
`
`manufacturers had already begun selling digital hearings aids before the critical
`
`date. See Ex. 1128, noting that "[t]he concept of digital signal processing (DSP)
`
`instruments is no longer novel or surprising to dispensers or consumers" correctly
`
`predicting that "digital hearing aids will be the standard fitting" (Ex. 1128-001),
`
`3
`
`
`
`IPR2017-01018 - Petitioner's Reply to Supplemental Response
`U.S. Patent No. 7,043,040
`
`and identifying numerous benefits associated with digital hearing aids, including
`
`programmability, precise fitting, effective feed-back cancellation, noise
`
`suppression, program selection for different sound environments, and, ultimately,
`
`"increased patient benefit and satisfaction." Ex. 1128-003 to -006.
`
`With reference to claim 9, Patent Owner further argues that it would not
`
`have been obvious to modify a BAHA to include a DSP to actively counteract
`
`acoustic feedback because "such feedback was not typically a problem at the
`
`critical date" and that feedback "had already been solved prior to the critical date."
`
`Supp. Resp. at 8 (emphasis added). First, the '040 patent does not provide any
`
`detail for DSP-implemented feedback cancellation, instead relying entirely on
`
`technology in the public domain. Ex. 1127, 47:11-49:21. There were no
`
`unexpected benefits associated with incorporating active feedback cancellation in a
`
`BAHA. Id.at 49:17-21. Patent Owner's argument that acoustic feedback issues
`
`"had already been solved" is inconsistent with the earlier qualified assertion that
`
`feedback was not "typically" a problem, and this entire argument is undercut by
`
`Dr. Rubenstein's cross-examination testimony - showing that: (1) the overall gain
`
`("output") of the HC-2002 BAHA in Carlsson was limited due to acoustic feedback
`
`concerns ("stability" and design trade-off with overall gain) (Ex. 1007-051; Ex.
`
`1127, 19:7-20:25, 25:7-25, 27:12-28:1); (2) this limited output was not loud
`
`2 Also referred to as the "Classic 300." Ex. 1127, 15:7-11.
`
`4
`
`
`
`IPR2017-01018 - Petitioner's Reply to Supplemental Response
`U.S. Patent No. 7,043,040
`
`enough for some patients and rendered the device unsuitable for other potential
`
`patients (limited "patient uptake") – this was recognized as "a real issue" for the
`
`BAHA (Ex. 1127, 22:23-23:24); and (3) it would have been desirable to increase
`
`overall gain while avoiding acoustic feedback (Ex. 1127, 17:8-13, 29:3-25). Thus,
`
`feedback was a major design constraint affecting BAHA performance. A POSA
`
`would have had reasons to incorporate active feedback cancellation in a BAHA.
`
`See -01018 Pet. at 50-52; Ex. 1002, ¶¶ 161-164; see also Ex. 1130 (describing
`
`DSP-implemented feedback cancellation in hearing aids early as 1992); Ex. 1128-
`
`006 (describing increased gain margins of 10 to 15 dB using active feedback
`
`cancellation).
`
`IV. Claim 8 - Unpatentable Over Vaneecloo, Carlsson, Leysieffer, Schaefer
`
`Claim 8 further recites: "… wherein the signal processing means adapts
`
`frequency characteristics to the individual differences in an acoustic head shadow
`
`effect, to a sound environment, to a resonance patient's skull, or to a hearing
`
`capacity of a functioning ear of the patient." Patent Owner alleges that there is a
`
`lack of "motivation" to combine Schaefer with Vaneecloo-Carlsson-Leysieffer
`
`because "[a]t best, Schaefer describes shaping the "frequency response" to the
`
`impaired ipsilateral ear - which is not the same as the requirement of claim 8."
`
`Supp. Resp. at 10. First, Patent Owner's argument is simply an attack on the
`
`individual Schaefer reference and fails to address the combination of the instituted
`
`5
`
`
`
`IPR2017-01018 - Petitioner's Reply to Supplemental Response
`U.S. Patent No. 7,043,040
`
`grounds – where the primary reference, Vaneecloo, teaches using a bone-anchored
`
`hearing device that transmits sound from the patient's deaf side to the patient's
`
`functioning ear on the contra-lateral side. Ex. 1002, ¶¶ 68-71, 90, 91. Patent Owner
`
`cannot show nonobviousness by attacking references individually where the
`
`ground of unpatentability is based on an obvious combination of references. In re
`
`Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091 (Fed.
`
`Cir. 1986). The '040 patent does not describe any detail for adapting frequency
`
`characteristics to the hearing capacity of the patient's functioning ear, instead
`
`relying entirely on technology in the public domain. Ex. 1127, 51:16-52:4. There
`
`were no unexpected benefits associated with incorporating such a known feature in
`
`a BAHA. See e.g., Id. at 52:6-12; See also -01018 Pet. at 52-55, Ex. 1002, ¶¶ 118,
`
`168-171; Ex. 2008, 103:6-104:24.
`
`V. Claim 10 - Unpatentable over Vaneecloo, Carlsson, Leysieffer, Lesinski
`
`Regarding the "directivity" feature of claim 10, the '040 patent does not
`
`detail any specific DSP "directivity means" and does not even mention a
`
`directional microphone in the alleged "detailed description," instead relying
`
`entirely on technology in the public domain. There were no unexpected benefits
`
`associated with incorporating "directivity" in a BAHA. See e.g., Ex. 1127, 43:2-10,
`
`44:12-16, 44:24-45:3; Ex. 1002, ¶¶ 176-182. Patent Owner's argument at page 11
`
`that modifying the BAHA of the Vaneecloo-Carlsson-Leysieffer combination to
`
`6
`
`
`
`IPR2017-01018 - Petitioner's Reply to Supplemental Response
`U.S. Patent No. 7,043,040
`
`include a directional microphone of Lesinski would be a "fundamental change" is
`
`merely an argument of "physical combinability," which is not the proper standard
`
`for determining obviousness. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)
`
`(noting that "[i]t is well established that a determination of obviousness from
`
`multiple references does not require an actual, physical substitution of elements.").
`
`Moreover, Patent Owner's assertion that incorporating a directional microphone,
`
`such as disclosed in Lesinski, would be a "fundamental change" cannot be
`
`reconciled with earlier disclosure of incorporating a directional microphone in a
`
`bone-anchored hearing device. See, e.g., Ex. 1131, including 1131-004. Finally,
`
`Patent Owner's alleged "objective evidence of non-obviousness" at page 12 is
`
`entirely unsupported and cannot possibly overcome the strong prima facie showing
`
`of obviousness. Tokai Corp. v. Easton Enters., 632 F.3d 1358, 1371 (Fed. Cir.
`
`2011).
`
`VI. Conclusion
`
`Based at least on the foregoing, Petitioner respectfully requests that claims
`
`7-10 of the '040 patent be deemed unpatentable and canceled.
`
`Dated: June 26, 2018 Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/D. Richard Anderson/
`D. Richard Anderson (Reg. No. 40,439)
`Eugene T. Perez (Reg. No. 48,501)
`BIRCH, STEWART, KOLASCH & BIRCH, LLP
`
`
`7
`
`
`
`IPR2017-01018 - Petitioner's Reply to Supplemental Response
`U.S. Patent No. 7,043,040
`
`
`CERTIFICATE OF PAGE COUNT
`
`
`
`
`Pursuant to the Board's Order of May 8, 2018 (Paper 33), Petitioner hereby
`
`certifies that this Reply to Patent Owner's Supplemental Response is seven (7)
`
`pages. This page count excludes the table of contents, table of authorities,
`
`certificate of page count, and certificate of service.
`
`
`
`Dated: June 26, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/D. Richard Anderson/
`D. Richard Anderson, Reg. No. 40,439
`Eugene T. Perez, Reg. No. 48,501
`BIRCH, STEWART, KOLASCH & BIRCH, LLP
`8110 Gatehouse Road, Suite 100E
`Falls Church, VA 22042
`Tel.: (703) 205-8000
`Fax: (703) 205-8050
`Email: mailroom@bskb.com
`Attorneys for Petitioner
`
`8
`
`
`
`IPR2017-01018 - Petitioner's Reply to Supplemental Response
`U.S. Patent No. 7,043,040
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on this 26th day of June, 2018, a copy of the foregoing
`
`PETITIONER'S REPLY TO PATENT OWNER'S SUPPLEMENTAL
`
`RESPONSE was served upon the following persons via email:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Bruce G. Chapman
`Laura M. Burson
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`333 South Hope Street
`43rd Floor
`Los Angeles, CA 90071-1422
`bchapman@sheppardmullin.com
`lburson@sheppardmullin.com
`
`
`
`
`
`
`
`/D. Richard Anderson/
`D. Richard Anderson
`
`
`
`
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
