Trials@uspto.gov
`571-272-7822
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` Paper No. 52
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`Entered: August 21, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OTICON MEDICAL AB; OTICON MEDICAL LLC;
`WILLIAM DEMANT HOLDING A/S,
`Petitioner,
`
`v.
`
`COCHLEAR BONE ANCHORED SOLUTIONS AB,
`Patent Owner.
`____________
`
`Case IPR2017-010181
`Patent 7,043,040 B2
`____________
`
`
`
`Before JAMES B. ARPIN, BARBARA A. PARVIS, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`1 Case IPR2017-01019 has been consolidated with the instant proceeding.
`
`

`

`IPR2017-01018
`Patent 7,043,040 B2
`
`
`I.
`
`INTRODUCTION
`A. Background
`
`In IPR2017-01018, Oticon Medical AB, Oticon Medical LLC, and
`William Demant Holding A/S (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 1–10 and 13 of U.S. Patent No. 7,043,040 B2
`(Ex. 1001, “the ’040 patent”). Paper 1 (“Pet.”). Cochlear Bone Anchored
`Solutions AB (“Patent Owner”) filed a Preliminary Response to the Petition.
`Paper 6 (“Prelim. Resp.”). We instituted an inter partes review of claims 1–
`6 and 13 on two grounds of unpatentability, pursuant to 35 U.S.C. § 314.
`Paper 7 (“Dec. on Inst.”), 27.
`In IPR2017-01019, Petitioner requested a further inter partes review
`of claims 1, 11, and 12 of the ’040 patent. IPR2017-01019, Paper 1 (“–1019
`Pet.”). Patent Owner filed a Preliminary Response to the Petition. Paper 6
`(“–1019 Prelim. Resp.”). We instituted an inter partes review of claims 1,
`11, and 12 on two grounds of unpatentability, pursuant to 35 U.S.C. § 314.
`Paper 7 (“–1019 Dec. on Inst.”), 20.
`Subsequent to our decisions instituting inter partes reviews of
`claims 1–6 and 11–13, we issued an Order consolidating the trial in
`IPR2017-01019 with that in IPR2017-01018, such that IPR2017-01019 was
`terminated as a separate proceeding. Paper 9. Accordingly, all subsequent
`filings and exhibits were made in the record of IPR2017-01018.2
`
`
`2 Unless noted by the prefix “–1019,” all citations to papers or exhibits
`herein refer to filings in IPR2017-01018.
`2
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`

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`IPR2017-01018
`Patent 7,043,040 B2
`
`
`After institution, Patent Owner filed a Response (Paper 23, “PO
`Resp.”) to the Petitions, as well as a statutory disclaimer of claims 1–3 and
`13 (Paper 24). Petitioner filed a Reply (Paper 28, “Reply”).
`Additionally, after Petitioner filed its Reply, the U.S. Supreme Court
`issued its decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). See
`Papers 32–33. Pursuant to SAS Institute, a decision to institute an inter
`partes review under 35 U.S.C. § 314 may not institute trial on fewer than all
`claims challenged in the petition. Id. at 1355–56, 1358. In this proceeding,
`however, the Board had denied institution of an inter partes review of
`challenged claims 7–10. See Dec. on Inst. 9–11, 24, 26. Accordingly, we
`modified our Decision on Institution in IPR2017-01018 to include review of
`challenged claims 7–10, on the grounds presented in the Petition. Paper 33,
`3. We authorized the parties to conduct supplemental briefing directed to
`these claims and grounds. Id. at 3–5.
`Specifically, Patent Owner filed a Supplemental Response (Paper 35,
`“Supp. Resp.”), addressing the newly-added challenges to claims 7–10, and
`Petitioner filed a Supplemental Reply (Paper 40, “Supp. Reply”). Patent
`Owner also filed a Motion to Exclude Exhibit 1131, which was filed with
`Petitioner’s Supplemental Reply. Paper 43 (“Mot. Exclude”). Petitioner
`filed an Opposition, with our authorization. Paper 50 (“Opp. Mot.
`Exclude”); see also Paper 46, 2 (denying Patent Owner’s Alternative Motion
`to Sur-Reply, which was filed without authorization).
`An oral hearing was held on July 11, 2018, and a transcript of the
`hearing is included in the record. Paper 51 (“Tr.”). Prior to the oral hearing,
`
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`3
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`IPR2017-01018
`Patent 7,043,040 B2
`
`the parties filed a joint List of Objections to Demonstrative Exhibits.
`Paper 47.3
`To summarize, over the course of this consolidated proceeding, we
`instituted an inter partes review with respect to all claims challenged on all
`grounds asserted by Petitioner across both proceedings i.e., we instituted
`review of all challenged claims 1–13, and on all grounds presented in both
`Petitions. See Dec. on Inst. 27 (instituting claims 1–6 and 13); –1019 Dec.
`on Inst. 20 (instituting claims 1, 11, and 12); Paper 33, 3 (instituting claims
`7–10). Due to Patent Owner’s statutory disclaimer, claims 1–3 and 13 are
`no longer at issue. Paper 24. Accordingly, only claims 4–12 are addressed
`in this Final Written Decision.
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has met
`its burden of demonstrating that challenged claims 4–6, 11, and 12 are
`unpatentable by a preponderance of the evidence. See infra Section II.D–G.
`Also for the reasons set forth below, Petitioner has not met its burden of
`demonstrating that challenged claims 7–10 are unpatentable by a
`preponderance of the evidence. See infra Section II.A.1.
`
`B. Related Proceedings
`
`The parties represent that the ’040 patent is at issue in district court
`litigation, Cochlear Ltd. et al. v. Oticon Medical AB et al., No. 1:16-cv-
`01700 (D. Colo.), and in an arbitration proceeding under the Arbitration
`
`
`3 Because neither party discussed the objected-to demonstratives during the
`oral hearing, we deem those objections moot. See generally Tr.; Paper 39, 3
`(“[W]e consider demonstrative exhibits only to the extent . . . they elucidate
`the parties’ arguments presented during the hearing.”).
`4
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`IPR2017-01018
`Patent 7,043,040 B2
`
`Rules of the Arbitration Institute of the Stockholm Chamber of Commerce
`(SCC Arbitration No V2016/181). Pet. 1–2; –1019 Pet. 5–6; Paper 4, 2;
`–1019 Paper 4, 2.
`
`C. The ’040 Patent
`
`The ’040 patent, entitled “Hearing Aid Apparatus,” issued on May 9,
`
`2006. Ex. 1001, (45), (54). The ’040 patent explains that prior art bone
`anchored hearing aids were useful in treating certain types of hearing loss.
`Id. at 1:45–50, 1:62–67. The ’040 patent describes operation of these
`devices as follows:
`In such a bone anchored hearing aid the sound information
`is mechanically transmitted by means of a vibrator via the skull
`bone to the inner ear of a patient. The hearing aid device is
`connected to an implanted titanium screw installed in the bone
`behind the poor, external ear[, i.e., the external portion of a deaf
`ear,] and the sound is transmitted via the skull bone to the cochlea
`(inner ear) of this poor ear.
`Id. at 1:52–58. According to the ’040 patent, however, these devices were
`not used for patients with “unilateral hearing loss, i.e.[,] individuals with []
`normal or [] slightly impaired hearing on one ear and a profound hearing
`loss in the inner ear on the other side of the head.” Id. at 1:8–11, 2:1–5.
`Consequently, the ’040 patent seeks to provide a hearing aid for
`rehabilitation of unilateral hearing loss based on this bone conducting
`principle. Id. at 2:5–12.
`
`
`
`5
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`

`IPR2017-01018
`Patent 7,043,040 B2
`
`
`Figure 1 of the ’040 patent is reproduced below.
`
`
`Figure 1 depicts a patient’s skull with a hearing aid located near the patient’s
`deaf ear. Id. at 2:33, 2:44–50 (also noting that the patient’s other ear is
`“normal or [has] only [] slightly impaired hearing”). Skin penetrating
`spacer 11 is anchored to skull bone 2 by fixture 3. Id. at 2:50–53.
`A housing at the opposite end of spacer 11 includes vibrator 1,
`microphone 5, and electronic circuitry 4. Id. at 2:50–55. Because high
`frequencies are attenuated during bone conduction across the skull, the
`frequency characteristics of the hearing aid are adapted such that “the
`amplification is higher in the treble . . . than in the bass.” Id. at 2:56–62.
`
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`IPR2017-01018
`Patent 7,043,040 B2
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`The ’040 patent also discloses alternative embodiments that avoid
`
`skin penetration, shown in Figures 2 and 3 below. Id. at 2:34–39.
`
`
`
`
`Figures 2 and 3 depict schematic views of a skull in which a hearing aid is
`partially implanted. Id. at 2:34–39, 3:9–11. As shown in Figure 2,
`implantable part 8 includes a vibrator, while external part 7 includes
`microphone 6 and battery 9. Id. at 3:9–12. “[P]ower is transmitted to the
`implanted part 8 of the hearing aid by means of induction.” Id. at 3:12–14.
`
`In the embodiment shown in Figure 3, implantable part 8 is arranged
`on the non-deaf side, and includes rechargeable battery 10, which is charged
`by induction from an external power supply. Id. at 3:15–20. External part 7,
`including microphone 6 and battery 9, is located on the deaf side of the
`skull, and the signal is transmitted from external part 7 to implantable part 8
`by radio signal. Id. at 3:20–24.
`
`D.
`
`Illustrative Claim
`
`As noted above, claims 4–12 remain at issue in this proceeding.
`Each of these claims depends, directly or indirectly, from independent
`claim 1, which is reproduced below.
`1. A bone-conducting bone-anchored hearing aid apparatus
`for sound transmission from one side of a patient’s head to the
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`IPR2017-01018
`Patent 7,043,040 B2
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`
`patient’s cochlea on another side of the patient’s head for
`rehabilitation of unilateral hearing loss, the hearing aid apparatus
`comprising:
`a vibratory generating part arranged to generate vibrations
`that are mechanically transmitted through the skull bone
`from a deaf side to the inner ear on the other side of the
`patient; and
`an implantable part operative to mechanically anchor the
`vibratory generating part, the implantable part being
`osseointegrated in the patient’s skull bone behind an
`external ear at the deaf side of a patient.
`Ex. 1001, 3:29–41. Dependent claims 4 and 5 further require that the
`apparatus transmits vibrations from one side of the skull to the other, and
`amplifies treble frequencies, including those over 1 kHz, more than bass
`frequencies. Id. at 3:48–53. Dependent claims 6–10 require that the
`apparatus includes electronic circuitry and/or “signal processing means.”
`Id. at 4:1–25. Dependent claims 11 and 12 specify that the implantable part
`and vibratory generating part comprise an internal part, wherein power is
`transmitted to the internal part by induction. Id. at 4:26–36.
`
`
`
`
`
`8
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`IPR2017-01018
`Patent 7,043,040 B2
`
`
`E. Applied References
`
`Petitioner relies upon the following references. Pet. 4–6; –1019
`Pet. 8–9.
`Name
`
`Reference
`
`Date
`
`Exhibit
`No.
`Ex. 10034
`
`Ex. 1007
`
`Ex. 1009
`
`Ex. 10125
`
`Ex. 1018
`
`Ex. 1019
`
`Carlsson
`
`Vaneecloo F.M. Vaneecloo et al., Prosthetic Rehabilitation
`of Unilateral Anakusis: Study by stereo-
`audiometry, 117 ANN. OTOLARYNGOL. CHIR.
`CERVICOFAC. 410 (2000)
`Peder U. Carlsson, On Direct Bone Conduction
`Hearing Devices, Technical Report 195, Dept. of
`Applied Electronics, Chalmers University of
`Technology (1990)
`Leysieffer CA 2301437 A1
`
`Published
`Oct. 8, 2000
`J.V.D. Hough et al., Long-Term Results for the
`Xomed Audiant Bone Conductor, 28
`Otolaryngologic Clinics of North America 43
`(1995)
`U.S. Patent No. 5,881,158
`
`Hough
`
`Lesinski
`
`Schaefer U.S. Patent No. 4,729,366
`
`Issued
`Mar. 9, 1999
`Issued
`Mar. 8, 1988
`
`
`4 Petitioner provides an original version of the Vaneecloo reference in
`French. See Ex. 1004. In this Decision, we cite to the English translation of
`Vaneecloo, which was submitted with a sworn statement attesting to its
`accuracy. Ex. 1003, 1.
`5 In the –1019 Petition, Petitioner provided this document as Exhibit 1112.
`For convenience, we cite to Exhibit 1012, the version of Hough of record in
`IPR2017-01018.
`
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`9
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`IPR2017-01018
`Patent 7,043,040 B2
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`
`Petitioner also relies upon the Declaration of Dr. Gerald R. Popelka
`(Ex. 1002), and the –1019 Declaration of Dr. Gerald R. Popelka (Ex. 11026),
`each filed with the respective Petition.
`Patent Owner relies upon the Declaration of Jay Rubinstein
`(Ex. 2002), and the –1019 Declaration of Jay Rubinstein (Ex. 20037), each
`filed with the respective Preliminary Response. Patent Owner additionally
`relies on a December 21, 2017, Declaration of Jay Rubinstein (Ex. 2004),
`filed with the Patent Owner Response, as well as a June 5, 2018, Declaration
`of Jay Rubinstein (Ex. 2031), filed with the Supplemental Patent Owner
`Response.
`Finally, the parties provide citations to deposition testimony of
`Dr. Popelka and Dr. Rubinstein. See Ex. 1121 (Mar. 29, 2018, deposition of
`Dr. Rubinstein); Ex. 1127 (June 20, 2018, deposition of Dr. Rubinstein);
`Ex. 2008 (Nov. 29, 2017, deposition of Dr. Popelka).
`
`
`
`
`6 In the –1019 Petition, Petitioner provided this document as Exhibit 1102.
`At our request, see Paper 9, 3, the document was entered into the record of
`IPR2017-01018, also as Exhibit 1102.
`7 In the –1019 Preliminary Response, Patent Owner provided this document
`as Exhibit 2002. At our request, see Paper 9, 3, the document was entered
`into the record of IPR2017-01018, as Exhibit 2003, which we cite herein.
`10
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`IPR2017-01018
`Patent 7,043,040 B2
`
`
`F. Asserted Grounds of Unpatentability
`
`We instituted inter partes review on the following grounds. Dec. on
`Inst. 27; –1019 Dec. on Inst. 20; Paper 33, 2–3. Because claims 1–3 and 13
`have been statutorily disclaimed, they are not included in the table below.
`Paper 24.
`Petition
`
`Reference(s)
`
`–1018 Vaneecloo and Carlsson
`–1018 Vaneecloo, Carlsson, and
`Leysieffer
`–1018 Vaneecloo, Carlsson,
`Leysieffer, and Schaefer
`–1018 Vaneecloo, Carlsson,
`Leysieffer, and Lesinski
`–1019 Hough
`–1019 Hough and Leysieffer
`
`Basis
`
`Claim(s)
`Challenged
`§ 103(a) 4, 5
`§ 103(a) 6, 7, 9
`
`§ 103(a) 8
`
`§ 103(a) 10
`
`§ 102(b) 11
`§ 103(a) 12
`
`II. DISCUSSION
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Tech.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, we
`generally give claim terms their ordinary and customary meaning, as
`understood by a person of ordinary skill in the art in the context of the entire
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007).
`
`
`
`11
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`IPR2017-01018
`Patent 7,043,040 B2
`
`
`1. Claims 7–10: Means-Plus-Function Limitations
`i. Legal Basis
`
`Pursuant to 35 U.S.C. § 112, ¶ 6, claims may be drafted in “means-
`plus-function” format. The statute provides:
`An element in a claim for a combination may be expressed
`as a means or step for performing a specified function without
`the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding
`structure, material, or acts described in the specification and
`equivalents thereof.8
`35 U.S.C. § 112, ¶ 6 (emphasis added).
`Claim limitations that include the word “means” are presumed to
`invoke 35 U.S.C. § 112, ¶ 6. See Williamson v. Citrix Online, LLC, 792
`F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part) (“[U]se of the
`word ‘means’ creates a presumption that § 112, ¶ 6 applies.”) (quoting
`Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696,
`703 (Fed. Cir. 1998)); see also Greenberg v. Ethicon Endo–Surgery, Inc.,
`91 F.3d 1580, 1584 (Fed. Cir. 1996).
`This presumption may be rebutted, however, “if the evidence intrinsic
`to the patent and any relevant extrinsic evidence so warrant.” Personalized
`Media Commc’ns, 161 F.3d at 704. For example, the presumption may be
`overcome where the claim specifically identifies structure sufficient to
`perform the recited function. See TriMed, Inc. v. Stryker Corp., 514 F.3d
`
`
`8 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112–29,
`125 Stat. 284 (2011) (“AIA”) re-designated 35 U.S.C. § 112 ¶ 6, as
`35 U.S.C. § 112(f). However, because the ’040 patent has a filing date
`before September 16, 2012, the effective date of § 4(c) of the AIA, we will
`refer to the pre-AIA version of 35 U.S.C. § 112.
`12
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`IPR2017-01018
`Patent 7,043,040 B2
`
`1256, 1259–60 (Fed. Cir. 2008); Sage Prods., Inc. v. Devon Indus., Inc., 126
`F.3d 1420, 1427–28 (Fed. Cir. 1997). Indeed, the Federal Circuit has been
`clear that “the essential inquiry is not merely the presence or absence of the
`word ‘means’ but whether the words of the claim are understood by persons
`of ordinary skill in the art to have a sufficiently definite meaning as the
`name for structure.” Williamson, 792 F.3d at 1348.
`If it is determined that a claim invokes 35 U.S.C. § 112, ¶ 6, the claim
`must be construed in a “two-step process,” whereby we “first identify the
`claimed function,” and then “determine what structure, if any, disclosed in
`the specification corresponds to the claimed function.” Williamson, 792
`F.3d at 1351. Then, to demonstrate that the claim, so construed, is
`unpatentable in light of asserted prior art, a petitioner must show that the
`prior art teaches the same structure that is disclosed in the patent’s
`specification as corresponding to the claimed function, or its equivalent.
`See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–
`1300 (Fed. Cir. 2009) (“It is firmly established in our precedent that a
`structural analysis is required when means-plus-function limitations are at
`issue; a functional analysis alone will not suffice.”).
`
`ii. Preliminary Determination at Institution
`
`In this case, challenged claims 7–10 recite the word “means.”
`Specifically, claim 7 recites that “the electronic circuity [recited in claim 6,
`and ‘operative to convert a signal . . . from an analog signal to a digital
`signal’] comprises digital signal processing means.” Ex. 1001, 4:1–9.
`Claim 8 depends from claim 7 and recites that “the signal processing means
`adapts frequency characteristics” to various features, e.g., to a sound
`environment or to a patient’s skull resonance. Id. at 4:10–15. Claim 9
`13
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`IPR2017-01018
`Patent 7,043,040 B2
`
`recites “signal processing means for actively counteracting acoustic feed-
`back problems.” Id. at 4:16–19. And claim 10 recites “directivity means
`comprising at least one directivity dependent microphone and/or signal
`processing means.” Id. at 4:20–25.
`In the –1018 Petition, Petitioner stated that it “does not concede that
`the ‘040 Patent discloses adequate structure for performing the functions
`associated with any claimed ‘means,’” and Petitioner reserved its right to
`argue, in other forums, that the “means” language is indefinite. Pet. 22.9
`Petitioner further argued that the ’040 patent specification does not disclose
`“any specific structure or algorithm for performing the recited functions.”
`Id. at 24. Accordingly, Petitioner proposed that we construe this limitation
`
`
`9 If a patent specification fails to disclose structure corresponding to a
`claimed function, in a claim subject to 35 U.S.C. § 112, ¶ 6, ordinarily that
`claim is indefinite under 35 U.S.C. § 112, ¶ 2. See, e.g., In re Donaldson,
`16 F.3d 1189, 1194–95 (Fed. Cir. 1994) (“If an applicant fails to set forth [in
`the specification] an adequate disclosure, the applicant has in effect failed to
`particularly point out and distinctly claim the invention as required by [§ 112
`¶ 2].”); see also IPCom GmbH & Co. v. HTC Corp., 861 F.3d 1362, 1370
`n.8 (applying In re Donaldson to an inter partes reexamination proceeding);
`but cf. 35 U.S.C. § 311(b) (restricting permissible grounds in inter partes
`review to “only . . . a ground that could be raised under section 102 or 103
`and only on the basis of prior art consisting of patents or printed
`publications”). Nevertheless, we may not cancel a claim in an inter partes
`review by finding that claim indefinite. Tr. 19:6–10; see Cuozzo Speed
`Tech., LLC v. Lee, 136 S. Ct. 2131, 2141–42 (2016) (“[N]or does our
`interpretation enable the agency to act outside its statutory limits by, for
`example, canceling a patent claim for ‘indefiniteness under § 112’ in inter
`partes review.”); see also SAS Inst., 138 S. Ct. at 1358 ftnt. (“That an
`agency’s improvisation might be thought by some more expedient than what
`the law allows . . . does nothing to commend it either, for lawful ends do not
`justify unlawful means.” (citation omitted)).
`
`
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`IPR2017-01018
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`
`as a “digital signal processor, such as hardware, software, or a hardware-
`software combination, for performing the claimed signal processing
`functions.” Id.
`In its Preliminary Response, Patent Owner did not address Petitioner’s
`proposed constructions, stating that the “issues raised by this Preliminary
`Response do not depend on the proper interpretation of means plus function
`limitations in the claims.” Prelim. Resp. 17.
`In our Decision on Institution, we determined that Petitioner had not
`rebutted the presumption that 35 U.S.C. § 112, ¶ 6, applies to these claim
`limitations. Dec. on Inst. 10.10 Therefore, according to our Rules governing
`inter partes review practice, Petitioner was required to “identify the specific
`portions of the specification that describe the structure, material, or acts
`corresponding to each claimed function,” i.e., to construe the claim
`limitations. 37 C.F.R. § 42.104(b)(3). We determined that Petitioner failed
`to do so. Dec. on Inst. 11. Specifically, we determined that the portions of
`the Specification cited by Petitioner merely “reiterate the recited functions
`but do not provide any structure or algorithm for performing those
`functions.” Id. (citing Ex. 1001, 2:63–3:8).
`As we stated in our Decision, “[w]hen the specification of a
`challenged patent lacks sufficient disclosure of structure under 35 U.S.C.
`§ 112, ¶ 6, the scope of the claims cannot be determined without speculation,
`and, consequently, the differences between the claimed invention and the
`asserted prior art cannot be ascertained.” Id.; see, e.g., Fresenius, 582 F.3d
`
`
`10 We also determined that Petitioner had not rebutted the presumption that
`claim 6, which does not recite the term “means,” is not subject to 35 U.S.C.
`§ 112, ¶ 6. Dec. on Inst. 8–9. See infra Section II.A.2.i.
`15
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`
`at 1299–1300 (requiring a “structural analysis” when comparing means-
`plus-function limitations to prior art). Accordingly, because Petitioner had
`not met its burden of identifying structure corresponding to the claimed
`functions, we determined that claims 7–10 were not amenable to
`construction and could not be compared to the prior art. Id. Thus, we
`denied institution of an inter partes review of claims 7–10. Id.
`
`iii. Post-Institution Briefing
`As noted above, in SAS Institute, the U.S. Supreme Court held that,
`under 35 U.S.C. § 314, we may not institute an inter partes review on fewer
`than all claims challenged in a Petition, as we did in our Decision on
`Institution. Paper 32, 3. Accordingly, to comply with SAS Institute, we
`modified our Decision on Institution to include in this trial the challenges
`presented with respect to claims 7–10. Paper 33, 3. Our Order also
`authorized the parties to provide additional briefing regarding claims 7–10.
`Id. at 3–5.
`Claim 7
`Claim 7 recites: “the electronic circuity [recited in claim 6, and
`‘operative to convert a signal . . . from an analog signal to a digital signal’]
`comprises digital signal processing means.” Ex. 1001, 4:1–9. Because
`claim 7 recites the word “means” and an associated function, we presume
`that § 112, ¶ 6 applies. Williamson, 792 F.3d at 1348–49. Neither Patent
`Owner nor Petitioner identify sufficient intrinsic or extrinsic evidence to
`rebut this presumption. Supp. Resp. 2–5; Supp. Reply 1–2.
`In its supplemental briefing, Patent Owner contends that § 112, ¶ 6,
`does not apply to claim 7, because the claim does not recite a function.
`Supp. Resp. 3 (citing Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294,
`
`
`
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`IPR2017-01018
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`1302 (Fed. Cir. 1999)). According to Patent Owner, the broadest reasonable
`interpretation of this limitation is “a digital signal processor.” Id. (citing
`Ex. 2031 ¶¶ 31–32).
`In its supplemental briefing, Petitioner states only that, without
`waiving “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.” Supp. Reply 2. At oral argument, Petitioner additionally
`contended that the likely indefiniteness of, inter alia, challenged claim 7
`should not shield the patent from being evaluated with respect to the asserted
`prior art, even if the claims cannot be construed properly. Tr. 19:14–20:7.
`We are not persuaded that claim 7 does not invoke 35 U.S.C. § 112,
`¶ 6. “Digital signal processing,” preceding the word “means” as recited in
`claim 7, clearly is a function, namely, the processing of digital signals. We
`are not persuaded by the argument of Patent Owner’s counsel that this
`formulation does not invoke § 112, ¶ 6 because it is not written as “means
`for digital signal processing.” Tr. 45:11–47:4. Such an argument elevates
`form over substance. Indeed, the Federal Circuit, sitting en banc, considered
`such a formulation in Williamson, and determined that § 112, ¶ 6, applied to
`the claimed “distributed learning control module,” which also was written in
`“function-means/module” form, rather than “means/module-for-function”
`form. Williamson, 792 F.3d at 1349–50. Similarly, we are unpersuaded by
`the unsubstantiated argument of counsel that digital signal processing is not
`a function in this case, although it might be otherwise. Tr. 46:8–47:4.
`Moreover, claim 7 recites that the “digital signal processing means” is
`part of the “electronic circuitry” recited in claim 6, which “convert[s] . . . an
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`analog signal to a digital signal.” We recognize that claim 7 does not
`specify that the “digital signal processing means” is the sole element of the
`“electronic circuitry” recited in claim 6, i.e., claim 7 does not use “consisting
`of” or other limiting language. Nonetheless, the interplay between claims 6
`and 7, especially when considered in light of the ’040 patent specification,
`supports our understanding that “digital signal processing” is a function, one
`aspect of which includes converting analog signals to digital signals.
`Indeed, the ’040 patent states that
`electronic circuitry 4 comprises means for converting the signal
`from the microphone 5 from an analog [signal] to a digital signal
`for the necessary signal processing. Such signal processing
`means can then be used for adapting for instance the frequency
`characteristics to individual differences in the head shadow
`effect, [etc.].
`Ex. 1001, 2:66–3:6.
`Similar to the “distributed learning control module” considered in
`Williamson, here, the prefix “digital signal processing” does not impart any
`sufficiently definite structure to the word “means.” We have considered
`Dr. Rubinstein’s testimony that, based on his personal experience, a person
`of ordinary skill in the art would have understood “digital signal processor”
`and “digital signal processing means” to be synonymous. Ex. 2031 ¶ 32.
`However, Dr. Rubinstein does not explain how or why “digital signal
`processing means” would have been understood as a name for a specific
`structure. Although Dr. Rubinstein references his experience “reading and
`writing articles in the field, and discussing the design and operation of
`various hearing devices with other [persons of ordinary skill in the art
`(POSAs)],” Dr. Rubinstein does not provide any evidence, for example, a
`contemporaneous “article[] in the field,” to corroborate this otherwise
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`conclusory testimony. Nor does Dr. Rubinstein tie this opinion to the
`intrinsic record of the ’040 patent at all. See Williamson, 792 F.3d at 1354
`(“The testimony of one of ordinary skill in the art cannot supplant the total
`absence of structure from the specification.”); see also Default Proof Credit
`Card Sys. Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir.
`2005) (“[W]hile it is true that the patentee need not disclose details of
`structures well known in the art, . . . the specification must nonetheless
`disclose some structure. . . . Because the specification of the ‘182 patent
`discloses no structure corresponding to the claimed function of the ‘means
`for dispensing,’ [the patentee] cannot use the declaration of its expert to
`rewrite the patent’s specification.” (citations omitted)); Omega Eng’g, Inc. v.
`Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003) (discussing similar
`limits on declarant testimony). As such, we afford this testimony little
`weight. See 37 C.F.R. § 42.65(a); In re Acad. of Sci. Tech. Ctr., 367 F.3d
`1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
`declarations and conclude that the lack of factual corroboration warrants
`discounting the opinions expressed in the declarations.”).11
`In sum, the evidence of record is consistent with the presumption that
`35 U.S.C. § 112, ¶ 6 applies to claim 7. Neither party has presented
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`11 Petitioner’s willingness to agree to Patent Owner’s “broad construction”
`of this phrase, for purposes of this proceeding (Supp. Reply 2), does not
`absolve the panel of its obligation to determine the legally appropriate
`construction of the claim. Claim 7 recites the word “means,” which invokes
`the presumption that § 112, ¶ 6, applies. On the record before us, which
`lacks supported testimony explaining why “digital signal processing means”
`would be understood as a “digital signal processor,” we are not persuaded
`that the presumption has been rebutted.
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`sufficient evidence to rebut this presumption. Supp. Resp. 2–5; Supp.
`Reply 1–2.
`Next, we construe the claim language. Williamson, 792 F.3d at 1351.
`As discussed above, the claimed function is “digital signal processing.”
`Although Patent Owner takes the position that this limitation would be
`understood as a “digital signal processor,” neither Petitioner nor Patent
`Owner have identified, in the specification, any structure, and, in particular,
`any disclosure of a “digital signal processor,” that corresponds to and
`performs the recited function. Indeed, counsel for both parties
`acknowledged that the specification does not disclose a “digital signal
`processor” or any other structure for performing this function. Tr. 20:8–21:4
`(Petitioner’s counsel stating that he does not believe the phrase appears in
`the patent), 45:1–4 (Patent Owner’s counsel stating that she does not believe
`the phrase appears in the specification), 47:10–16 (stating that “other than
`identifying digital signal processing means, there isn’t any other structure
`disclosed,” and referencing Dr. Rubinstein’s opinion that a skilled artisan
`“would understand how to implement for . . . these claim embodiments”).
`We have reviewed the ’040 patent specification, of which only
`51 lines are devoted to describing the purported invention. Ex. 1001, 2:44–
`3:27. The 13 lines of the specification devoted to signal processing do not
`include any reference to a “digital signal processor” or any other structure
`for performing “digital signal processing.” Id. at 2:66–3:8. Instead, the
`specification simply references “means” for performing the signal
`processing functions. Id. at 2:66, 3:2. That said, it is Petitioner’s duty to
`identify the necessary structure. 37 C.F.R. § 42.104(b)(3).
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`Moreover, in order to avoid purely functional claiming, the
`corresponding structure of a means-plus-function limitation must be more
`than a general