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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`1964 EARS, LLC,
`Petitioner,
`
`v.
`
`JERRY HARVEY AUDIO HOLDING, LLC,
`Patent Owner.
`___________
`
`Case IPR2017-01091
`Patent 8,925,674
`___________
`
`
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER CONTINGENT MOTION TO AMEND
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`Case IPR2017-01091
`U.S. Patent No. 8,925,674
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`
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE CITED PORTIONS OF THE ORIGINAL DISCLOSURES SUPPORT
`THE PROPOSED NEW CLAIM LANGUAGE ............................................. 1
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`III. THE PRIOR ART NEITHER TAUGHT NOR MOTIVATED THE
`PROPOSED CLAIMS ..................................................................................... 5
`
`IV. CONCLUSION ................................................................................................ 7
`
`
`
`
`
`ii
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`Case IPR2017-01091
`U.S. Patent No. 8,925,674
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`EXHIBIT LIST
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`Exhibit #
`
`Description
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`EX2001
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`U.S. Patent Application No. 13/315,610
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`EX2002
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`Provisional U.S. Application 61/683,614
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`EX2003
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`Deposition Transcript of Bob Young dated April 2-3, 2018
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`EX2004
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`Deposition Exhibit 8 (Figure 7)
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`iii
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`Case IPR2017-01091
`U.S. Patent No. 8,925,674
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`I.
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`INTRODUCTION
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`
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`Petitioner argues Patent Owner’s Contingent Motion to Amend should be
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`denied because the original disclosures do not support the new “phase corrected
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`response” language and because the proposed amended claims are obvious over the
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`prior art. However, Petitioner’s own expert concedes the figures cited in the
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`Contingent Motion to Amend showed a “phase corrected response” and the prior
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`art neither taught nor motivated the new “phase corrected response” limitation.
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`Thus, in the event the Board should find any of the original claims unpatentable,
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`Patent Owner’s Contingent Motion to Amend should be granted.
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`II. THE CITED PORTIONS OF THE ORIGINAL DISCLOSURES
`SUPPORT THE PROPOSED NEW CLAIM LANGUAGE
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`
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`In its Contingent Motion to Amend (CMTA), Patent Owner cited portions of
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`the instant patent’s application (“the ‘502 application”; EX 1002), it’s parent’s
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`application (“the ‘610 application’; EX2001), and its provisional application (“the
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`‘614 application”; EX2002) for support of the new claim language relating to
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`“phase corrected response.” Paper 21 at 2-5. Petitioner argues these citations fail to
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`sufficiently explain how the original disclosures support the new language. Paper
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`23 at 3-11. However, Petitioner’s own expert conceded at his deposition that the
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`figures cited by Patent Owner in the CMTA disclose a “phase corrected response.”
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`As such, the CMTA does provide sufficient support from the original disclosures
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`1
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`Case IPR2017-01091
`U.S. Patent No. 8,925,674
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`for the proposed new claim language.
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`
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`With respect to the “phase corrected response” limitation, the CMTA cited,
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`inter alia, Fig. 7 of the ‘502 application and Fig. 2 of the ‘614 application for
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`support. Paper 21 at 3, 4. Petitioner asserts those figures are the same. Paper 23 at
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`3. That is largely, but not entirely correct.
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`
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`Fig. 7 of the ‘502 application was submitted through EFS-Web in color,
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`while Fig. 2 of the ‘614 application was submitted in black-and-white. The color
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`submission (EX2004) is the official version. See Legal Framework for Electronic
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`Filing System—Web (EFS-Web), 74 FR 55200 (Oct. 27, 2009), §B3 (“When the
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`USPTO successfully receives documents filed in accordance with the EFS-Web
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`requirements, … color and grayscale drawings [] are stored in the Supplemental
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`Complex Repository for Examiners (SCORE) as part of the official record.”).
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`Other than color versus black-and-white, Patent Owner agrees Fig. 7 of the ‘502
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`application and Fig. 2 of the ‘614 application are identical.
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`
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`Petitioner’s expert conceded that the figure is, “a graph of a phase-corrected
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`response.” EX2003 at 55 (Page 213, line 8). Specifically, Petitioner’s expert could
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`determine that the two curves in the top half of the figure are “phase response
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`curves,” and the “flatter” curve is in phase more than the other curve. EX2003 at
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`61-62 (page 236 lines 22-23 and page 241 lines 8 and 14-17). Thus, the figure
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`2
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`U.S. Patent No. 8,925,674
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`shows a corrected phase response compared to a non-corrected phase response.
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`
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`Patent Owner also cited in the CMTA paragraph 15 of the ‘614 application
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`(EX2002), which states, “Fig. 2 illustrates an example of the phase corrected
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`response of the system 10.” The same language is included in the ‘502 application.
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`EX1002 at ¶0067 (referencing the Figure as Figure 7, not Figure 2). The ‘502 and
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`614 applications also state, “FIG. 7 [2] is an exemplary graph of a phase corrected
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`response of the system in FIG. 6 [1].” EX1002 at ¶0032; and, EX2002 at ¶0005.
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`Thus, the descriptions of the figure provided in the original disclosures confirm
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`that it shows a phase corrected response.
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`
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`While paragraph 67 of the ‘502 application continues to say, “The red line in
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`the upper graph is the phase corrected response compared to an uncorrected
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`response in the lower graph,” Petitioner’s expert understands that to be inaccurate.
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`Instead, “the two curves… in the upper graph are phase curves, and in the lower
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`graph, it looks like the two curves are frequency response curves.” EX2003 at 61
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`(page 235 at 16-19). Mr. Young based this interpretation on, “general knowledge
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`of what phase curves look like.” EX2003 at 61 (page 236 lines 4-5).
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`
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`Thus, when properly considered from the perspective of a skilled artisan like
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`Mr. Young, the original disclosures support the new “phase corrected response”
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`limitation. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
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`3
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`U.S. Patent No. 8,925,674
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`(Fed.Cir.2010) (en banc) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563
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`(Fed.Cir.1991)) ("The written description requirement is satisfied when "the
`
`disclosure of the [invention in the parent application] reasonably conveys to those
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`skilled in the art that the inventor had possession of the claimed subject matter as
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`of the filing date.").
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`
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`While the reproduction value of the figure may make the labelling of the X
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`and Y axis difficult to read, those values are still readily understandable to a
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`POSA. In Ishii, the phase response curve in Fig. 9 provides frequency values along
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`the X axis and phase values along the Y axis. EX1042 at 6. The frequency values
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`on the X axis would be expected to go from 20 Hz to 20kHz, which Petitioner’s
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`expert testified was the typical frequency range for an IEM. EX2003 at 44 (page
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`170 lines 16-22). The phase values on the Y axis would be expected to be 180
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`to -180, since that is the full range of phases that a signal can have. EX1041, ¶13.
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`
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`Thus, even if one cannot specifically read the numerical values on the phase
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`response curve provided in Figure 7, a POSA would expect the X axis to provide
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`frequencies from 20Hz to 20kHz and the Y axis to provide phase values from 180
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`degrees to -180 degrees. More specifically, Petitioner’s expert testified at his
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`deposition that the red or “flatter” curve in the phase response graph of Figure 7
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`looked like it would probably be between 90 degrees and -90 degrees from 31.5Hz
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`4
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`U.S. Patent No. 8,925,674
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`to 16kHz, as recited in the new limitation added to the proposed amended claims.
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`EX2003 at 61 (page 61 lines 12-23).
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`III. THE PRIOR ART NEITHER TAUGHT NOR MOTIVATED THE
`PROPOSED CLAIMS
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`None of the originally cited prior art references provided any phase response
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`curve showing signals that had been phase corrected. Conceding this utter failure
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`of the prior art to teach the new limitation, “wherein the phase corrected response
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`is between 90 degrees and -90 degrees from 31.5Hz to 16kHz,” Petitioner
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`performed a hindsight driven search to uncover a single reference relating to
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`loudspeakers, not IEMs, that provides a single phase response curve.
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`However, even that reference does not teach a phase corrected response
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`between 90 degrees and -90 degrees from 31.5Hz to 16kHz. EX1042 at 6 (Fig. 9).
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`As Petitioner’s expert conceded at his deposition, Ishii only provided a phase
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`response curve from 60Hz to 19kHz, and it was not possible to determine what the
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`phase was at 50Hz, 40Hz or 31.5Hz. EX2003 at 42 (page 162 line 10 – page 163
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`line 2). Even when one could determine what Ishii taught, it was not within the
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`range of the new limitation. For example, according to Petitioner’s own expert, at
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`60Hz Ishii taught a phase of 100-120 degrees and at 16kHz Ishii taught a phase of -
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`100 to -110 degrees, both of which are outside the claimed range of 90 to -90
`
`degrees. EX2003 at 42 (page 163 line 10 – page 164 line 3).
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`5
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`Petitioner’s expert also conceded there would have been no motivation at the
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`time of invention of the patent here to phase correct signals in an IEM. There was
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`no recognized need for phase correction, nor was it a recognized problem. EX2003
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`at 18 (page 69 lines 20-25). In fact, phase has nothing to do with fidelity of an IEM
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`according to Petitioner’s expert. EX2003 at 21 (page 80 lines 5-7). Thus, there was
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`no reason why one of skill in the art would have taken the prior art IEMs and
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`sought to correct their phase responses as claimed in the proposed amended claims.
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`
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`Even if motivated, there is no evidence in the record to support a finding that
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`one of skill in the art could have succeeded at creating a phase corrected response
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`in an IEM as claimed by the proposed amended claims. The only reference that
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`shows a phase response at all, Ishii, shows a phase response that does not stay
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`within 90 degrees and -90 degrees from 31.5Hz to 16kHz. The phase response
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`curve in Ishii indeed shows that the phase at the edges of the frequency range tend
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`to accelerate away from 0 degrees towards 180 and -180 degrees. EX1042 at 6.
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`Thus, there is no support for the conclusion that one of ordinary skill in the art,
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`even if motivated to phase correct signals in an IEM, would have been able to do
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`so as claimed in the proposed amended claims.
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`
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`Petitioner’s entire argument on this point rests on the assumption that the
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`proposed amended patent claims have a crossover and that at the crossover point
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`6
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`U.S. Patent No. 8,925,674
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`the phase is between 90 and -90 degrees. Paper 23 at 12 (citing EX1041 at ¶12).
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`But the proposed amended claims do not recite crossovers and Petitioner’s own
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`expert conceded crossovers are not mentioned anywhere in the patent. EX2003 at
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`52 (page 200 line 23 – page 201 line 21) and 58 (page 225 lines 2-19). Since there
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`is no crossover in the system according to the proposed amended claims,
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`Petitioner’s argument relying on a crossover is inapplicable.
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`
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`Petitioner’s argument also fails because it asserts that a system with a phase
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`at the crossover point of between 90 and -90 degrees would teach the proposed
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`claim limitation of “between 90 and -90 degrees from 31.5Hz to 16kHz.” But the
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`fact that the phase at one point through that frequency range is between 90 and -90
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`degrees does not teach the phase being between 90 and -90 degrees through the
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`frequency range from 31.5Hz to 16kHz. Thus, Petitioner’s “crossover point”
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`argument also fails.
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`IV. CONCLUSION
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`
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`For these reasons, should the Board find any of the original claims
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`unpatentable, Patent Owner respectfully requests that it grant Patent Owner’s
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`contingent motion to amend.
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`7
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`Case IPR2017-01091
`U.S. Patent No. 8,925,674
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`Date: April 12, 2018
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`Respectfully submitted,
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`By:
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`
`
`/Daniel B. Ravicher/
`Daniel B. Ravicher (Reg. No. 47,015)
`RAVICHER LAW FIRM PLLC
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`
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`Counsel for Patent Owner
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`8
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`Case IPR2017-01091
`U.S. Patent No. 8,925,674
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`CERTIFICATE OF SERVICE
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`
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`I certify that on the date indicated below I caused a true and correct copy of
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`the foregoing PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION
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`TO PATENT OWNER CONTINGENT MOTION TO AMEND to be served on
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`counsel for Petitioner by filing through the PTAB – E2E system as well as by
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`electronic mail to the following email addresses:
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`hillary@brooksquinn.com
`delfina@brooksquinn.com
`docketing@brooksquinn.com
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`By:
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`/Daniel B. Ravicher/
`Daniel B. Ravicher (Reg. No. 47,015)
`RAVICHER LAW FIRM PLLC
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`
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`Counsel for Patent Owner
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`Date: April 12, 2018
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