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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`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
`___________
`
`
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`PATENT OWNER RESPONSE
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`Case IPR2017-01091
`U.S. Patent No. 8,925,674
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE ‘674 PATENT ......................................................................................... 3
`
`III. PETITIONER HAS NOT CARRIED ITS BURDEN TO DEMONSTRATE
`THE UNPATENTABILITY OF ANY CHALLENGED CLAIM ................. 5
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`A. Harvey ‘806 Does Not Anticipate Any Claim of the ‘674 Patent ........ 5
`
`B.
`
`The Asserted Prior Art Does Not Render Any Claim Obvious ............ 9
`
`i.
`
`ii.
`
`iii.
`
`iv.
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`Saggio Did Not Teach Phase Corrected Signals ....................... 10
`
`Harvey ‘806 Did Not Teach Phase Corrected Signals.............. 12
`
`Petitioner Has Not Provided Sufficient Evidence to Show a
`POSA Would Have Been Motivated to Phase Correct Signals in
`a Canalphone As Claimed in the ‘674 Patent ........................... 14
`
`Petitioner Has Not Provided Any Evidence to Show a POSA
`Would Have Had a Reasonable Expectation of Success in Phase
`Correcting Signals in a Canalphone As Claimed in the ‘674
`Patent ......................................................................................... 16
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`IV. THESE PROCEEDINGS ARE UNCONSTITUTIONAL ........................... 19
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`V. CONCLUSION .............................................................................................. 20
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`U.S. Patent No. 8,925,674
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`TABLE OF AUTHORITIES
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`Cases
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`Page(s)
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`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ..................................................... 9, 10, 14, 15
`
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ..................................................... 9, 10, 15, 16
`
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`ClearValue, Inc. v. Pearl River Polymers, Inc.,
`668 F.3d 1340 (Fed. Cir. 2012) ................................................................... 7, 8
`
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ....................................................................... 10
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)................................................................................... 9, 10
`
`
`Vizio, Inc. v. Int’l Trade Comm’n,
`605 F.3d 1330 (Fed. Cir. 2010) ....................................................................... 5
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`U.S. Patent No. 8,925,674
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`I.
`
`INTRODUCTION
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`
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`Patent Owner Jerry Harvey Audio Holding, LLC (“Patent Owner”),
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`respectfully submits this response to the Petition for Inter Partes Review of U.S
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`patent 8,925,674 (“the ‘674 patent”). The Board instituted review of claims 1-11,
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`13-18 and 20 of the ‘674 patent on seven grounds summarized as anticipation by
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`Harvey ‘806 and obviousness over either Saggio or Harvey ‘806 alone or in
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`combination with other references. Paper 8 at 63. For the reasons discussed below,
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`the Board should find that Petitioner has not carried its burden to prove
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`unpatentability on any of the instituted grounds.
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`The ‘674 patent claims canalphones with two drivers of different frequencies
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`having their signals phase corrected by either: (i) a sound tube for the high driver
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`that is longer than the sound tube for the low driver, or (ii) a processor. See, e.g.,
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`Ex. 1001, 2:53-64, 3:15-19. However, as the Board found in its Institution
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`Decision, merely using a longer tube for a high driver or an arbitrary processor will
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`not inherently phase correct signals as required by each of the '674 patent's claims.
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`Paper 8 at 15; Ex. 1001, claim 1 (“to phase correct”), claim 9 (“phase correcting”),
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`and claim 21 ("to: … phase correct”). To confirm phase correction as claimed by
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`the ‘674 patent, one can graph the canalphone’s phase response. Ex. 1001, Fig. 7,
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`4:56-57.
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`1
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`Harvey ‘806 taught phase correcting signals from two drivers of different
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`frequencies by using a longer sound tube for the low driver, the exact opposite of
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`that claimed by the ‘674 patent, and there is no evidence in the record to confirm
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`Harvey ‘806’s signals were actually phase corrected as claimed by the ’674 patent.
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`Thus, Petitioner has not carried its burden to prove Harvey ‘806 anticipated the
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`challenged claims.
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`Regarding whether the ‘674 patent’s claims were obvious, while the general
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`concept of phase correction by either offsetting a high frequency speaker to be
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`farther away than a low frequency speaker or using a processor were known for
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`loudspeakers, Petitioner has not shown that one of ordinary skill in the art would
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`have either been motivated to use those general loudspeaker concepts to phase
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`correct signals from drivers in canalphones or had a reasonable expectation of
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`success in doing so. Harvey ‘806 in fact taught using a longer tube for the high
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`driver was not possible given packaging constraints of canalphones and the
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`heightened sensitivity of high drivers to separation induced audio degradation, both
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`of which dictated that it be the low driver that have a longer sound tube, not the
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`high driver as claimed by the ‘674 patent.
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`The only evidence offered by Petitioner on the issue of motivation is
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`unsupported conclusory assertions by its expert, but such naked assertions are
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`2
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`inadequate to establish motivation especially when the prior art teaches the exact
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`opposite of what is claimed, which is the case here. On the issue of reasonable
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`expectation of success, Petitioner offers no evidence at all.
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`Thus, Petitioner has not carried its burden of proving unpatentability on the
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`instituted obviousness grounds.
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`II. THE ‘674 PATENT
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`
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`The ‘674 patent relates to canalphones with at least two drivers, including a
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`high audio driver and a low audio driver, wherein the signals of the two drivers are
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`phase corrected. Ex. 1001, 2:49-57. “[C]analphones are personal listening devices
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`that are substantially smaller than a person's outer ear,” and “worn in the ear of the
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`user and not over and/or around the ear of the user.” Id., 1:28-30, 38-39.
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`“[C]analphones are also referred to as in-ear monitors due to how the canalphone is
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`worn by a listener.” Id., 1:36-37.
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`The signals of the two drivers in the ‘674 patent’s canalphone are phase
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`corrected by either having: (i) a sound tube for the high driver that is longer than
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`the sound tube for the low driver, or (ii) a processor. Id., 2:62-64, 7:52-57. One
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`way to achieve phase correction is for the time response of the low audio signal to
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`pass through the canalphone housing to be used as a control point to set the other
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`audio signal’s phase. Id., 3:27-31. The ‘674 patent does not teach phase correction
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`3
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`can be achieved with any longer tube for a high driver or with any processor. For
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`that reason, to confirm a canalphone has been phase corrected, the ‘674 patent
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`provides an example phase corrected response in Fig. 7, reproduced below.
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`
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`Id., Fig. 7, 4:56-57. The top graph shows a phase corrected response (the red line)
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`compared to an uncorrected response. Id., 8:8-11. The ‘674 patent’s invention
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`produces a corrected phase response that is much flatter and straighter than the
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`uncorrected phase response throughout the frequency range.
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`4
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`III. PETITIONER HAS NOT CARRIED ITS BURDEN TO
`DEMONSTRATE THE UNPATENTABILITY OF ANY
`CHALLENGED CLAIM
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`Petitioner has not carried its burden to prove any of the challenged claims
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`are unpatentable. First, Harvey ‘806 did not teach phase correcting signals from
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`two drivers in a canalphone by making the sound tube for the high driver longer, as
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`claimed by the ‘674 patent. Harvey ‘806 in fact taught the exact opposite. There is
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`also no evidence showing Harvey 806’s signals were actually phase corrected.
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`Second, Petitioner has not shown that one of ordinary skill in the art would have
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`either been motivated to modify or combine the prior art references to achieve the
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`‘674 patent’s claimed invention or had an expectation of success in doing so. The
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`prior art actually taught the claimed invention was not possible. The Board should
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`thus find that Petitioner has not carried its burden to prove the challenged claims
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`are unpatentable.
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`A. Harvey ‘806 Does Not Anticipate Any Claim of the ‘674 Patent
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`To be anticipatory, a reference must disclose “all of the limitations of the
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`claims arranged or combined in the same way as recited in the claims.” Vizio, Inc.
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`v. Int’l Trade Comm’n, 605 F.3d 1330, 1342 (Fed. Cir. 2010). While Harvey ‘806
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`taught canalphones with two drivers of different frequencies, Harvey ‘806 did not
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`teach their signals being phase corrected by using either a sound tube for the high
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`driver longer than the sound tube for the low driver or a processor, as required by
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`the ‘674 patent’s claims. Petitioner also has failed to provide any evidence that
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`Harvey ‘806 actually achieved phase correction. Thus, Harvey ‘806 does not
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`anticipate any claim of the ‘674 patent.
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`Petitioner makes no argument that Harvey ‘806 taught a processor, and
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`instead relies on Harvey’s teaching of a sound tube for its high driver that is
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`shorter than the sound tube for its low driver to suggest that Harvey 806’s signals
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`are phase corrected as claimed in the ‘674 patent. Pet., 36 (citing Ex. 1005, ¶¶ 32-
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`45). But Petitioner fails to point to any portion of Harvey ‘806 showing that its
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`signals are phase corrected by using a sound tube for the high driver that is longer
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`than the sound tube for the low driver. Instead, Petitioner argues that because
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`Harvey ‘806 teaches phase correction by making the sound tube for the low driver
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`longer, it also taught phase correction by making the sound tube for the low driver
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`shorter. Pet., 37. This interpretation directly contradicts Harvey ‘806 itself.
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`Harvey ‘806 expressly states it is only phase correcting by making the tube
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`for the low driver longer. Harvey ‘806 explains that, because “packaging
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`constraints typically determine the locations of the individual drivers,” “it is
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`preferable to keep the high frequency driver as close as possible to the eartip, thus
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`requiring driver offsetting to be performed on the lower frequency driver.” Ex.
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`6
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`1005, 6:17-18, 7:23-26 (emphasis added). Harvey ‘806 further explains, “[t]he
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`reason for this preference is that the lower frequencies are less susceptible to
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`separation induced audio degradation (i.e. separation between the driver and the
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`eartip).” Id., 7:27-30. This is why the only example provided in Harvey ‘806
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`makes the sound tube for the low frequency driver longer. Pet., 37 (citing Ex.
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`1005, 6:55-65, Fig. 3).
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`Thus, Harvey ‘806 did not teach phase correcting signals from two drivers in
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`a canalphone by making the sound tube for the high driver longer, as claimed by
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`the ‘674 patent. Harvey ‘806 taught the exact opposite, making the sound tube for
`
`the high driver shorter. The fact that some portions of Harvey ‘806, when
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`discussing driver offsetting, do not always repeat that it is the low driver being
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`offset with a longer tube does not mean that Harvey ‘806 taught offsetting either
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`the low driver or the high driver. The only offsetting taught by Harvey ‘806 is of
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`the low frequency driver, and Harvey ‘806 explains why that is the case.
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`Petitioner’s incorrect interpretation, which was adopted by the Board in the
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`Institution Decision, of Harvey ‘806 as teaching offsetting either the low driver or
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`the high driver with a longer sound tube expressly contradicts Harvey’806’s
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`teaching.
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`Petitioner cites ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d
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`1340, 1344 (Fed. Cir. 2012), for the argument that a reference does not fail to
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`anticipate simply because it “teaches away.” Patent Owner agrees, but Harvey ‘806
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`does not “teach away” from using a longer sound tube for the high frequency
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`driver, it does not teach it at all. In ClearValue, the prior art taught the claimed
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`process, but taught away from using it because it “does not work well.” Id. In that
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`case, the prior art taught that the claimed process worked, just “not well.”
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`Here, Harvey ‘806 nowhere taught using a sound tube for the high driver
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`longer than the sound tube for the low driver to phase correct their signals would
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`work. Harvey ‘806 only taught phase correction by using a sound tube for the high
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`driver shorter than the sound tube for the low driver. Harvey ‘806 explained why
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`that was the only configuration possible, namely that packaging constraints of
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`canalphones and the heightened sensitivity of high drivers to separation induced
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`audio degradation “required” that it be the low driver offset with a longer sound
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`tube, not the high driver. Ex. 1005, 7:23-30. Thus, ClearValue is inapposite.
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`Further, Petitioner also fails to provide any evidence showing Harvey 806’s
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`signals are phase corrected, such as by providing a phase response graph like that
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`provided by the ‘674 patent in Figure 7. The Board stated in its Institution Decision
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`that, “Figure 7 of the ‘674 patent is merely an example of a phase corrected
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`response,” and “[i]t is not necessary that every phase corrected signal response
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`8
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`reflect that which is shown in Figure 7.” Paper 8 at 51. Patent Owner agrees, but
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`that does not mean no showing of phase correction is required in order for Harvey
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`‘806 to anticipate the claims of the ‘674 patent. There must be some evidence that
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`Harvey ‘806 achieved phase correction as claimed by the ‘674 patent. Petitioner
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`has provided no such evidence and the Board cited none in its Institution Decision.
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`The Board instead assumed phase correction necessarily resulted from Harvey
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`‘806, an assumption that it is Petitioner’s burden to prove with evidence, which it
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`has not.
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`B.
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`The Asserted Prior Art Does Not Render Any Claim Obvious
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`If the prior art fails to teach each and every limitation of a claim, Petitioner
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`must show why there would have been a motivation to supply a missing limitation
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`in the prior art references, Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed.
`
`Cir. 2016), and why there would have been an expectation of success in doing so,
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`Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013).
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`Even if all of the limitations of a claim are present in the prior art, “a patent
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`composed of several elements is not proved obvious merely by demonstrating that
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`each of its elements was, independently, known in the prior art.” KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007). “[T]here must be some articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`9
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`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR, 550
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`U.S. at 418. And, again, this reasoning must include an explanation of why there
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`would have been a motivation to supply a missing limitation in the prior art
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`references, Arendi, 832 F.3d at 1361, and why there would have been an
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`expectation of success in doing so, Broadcom, 732 F.3d at 1335.
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`Here, Petitioner has not carried its burden to prove any of the challenged
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`claims were obvious on the instituted grounds because (i) Saggio did not teach or
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`suggest phase correcting signals in a canalphone, (ii) Harvey ‘806 taught phase
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`correcting signals in a canalphone as claimed by the ‘674 patent was not possible,
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`(iii) Petitioner has not shown that one of ordinary skill in the art would have either
`
`been motivated to modify or combine the prior art references to achieve the ‘674
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`patent’s “phase corrected” invention, and (iv) Petitioner has not shown that one of
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`ordinary skill in the art would have had an expectation of success in achieving the
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`‘674 patent’s “phase corrected” invention, especially given Harvey ‘806’s teaching
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`that phase correcting signals could not be achieved in the way claimed by the ‘674
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`patent.
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`i.
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`Saggio Did Not Teach Phase Corrected Signals
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`Several of the instituted obviousness grounds are based on Saggio as the
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`primary reference. While Saggio taught canalphones with two drivers of different
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`10
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`frequencies, Saggio did not teach that the signals are phase corrected. Petitioner
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`relies on Saggio’s teaching of a high driver sound tube longer than a low driver
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`sound tube to suggest that Saggio’s signals are phase corrected. Pet., 17-18 (citing
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`Ex. 1004, ¶¶ 36-37, Fig. 1). But Petitioner fails to point to any portion of Saggio
`
`teaching that its signals are phase corrected. Petitioner also fails to provide any
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`evidence showing Saggio’s signals are phase corrected like the phase response
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`graph provided by the ‘674 patent in Fig. 7.
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`Moreover, Saggio's FIG. 1 is clearly not drawn to scale, as the depicted
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`high-frequency driver (109) is drawn substantially larger than the low-frequency
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`driver (107), (a POSA would have known that tweeters are smaller than woofers in
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`reality) and Saggio never stated that correct phase is achieved by making the high
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`driver's tube longer.
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`Petitioner points to one portion of Saggio that states, “the phase relationship
`
`between two drivers may be tuned by varying the length of the sound-tubes,” but
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`that is not a showing that the signals are in fact phase corrected. Pet., 18 (citing
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`Ex. 1004, ¶ 46). On the contrary, the relied on citation – Saggio, ¶0046 ("the phase
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`relationship between the two drivers may be tuned by varying the length of the
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`sound tubes and the positions of the driver outputs relative to one another") – says
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`nothing about whether the phase relationship would be improved or degraded by
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`11
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`making the high driver's sound tube longer. Indeed, Petitioner concedes that if
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`“something more” than a high sound tube longer than a low tube is required,
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`Saggio does not teach that “something more.” Pet., 15. Here, the “something more”
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`that is required is phase correction.
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`Because Saggio fails to teach or suggest phase corrected signals, Petitioner
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`has failed to carry its burden to prove unpatentability on any of the instituted
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`obviousness grounds based on Saggio as the primary reference.
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`ii. Harvey ‘806 Did Not Teach Phase Corrected Signals
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`As discussed above with respect to the instituted Harvey ‘806 anticipation
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`ground, Harvey ‘806 did not teach or suggest phase correcting signals in a two
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`driver canalphone by sizing the sound tube for the high driver longer than the
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`sound tube for the low driver. Again, Harvey ‘806 expressly taught that, because
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`“packaging constraints typically determine the locations of the individual drivers,”
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`“it is preferable to keep the high frequency driver as close as possible to the eartip,
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`thus requiring driver offsetting to be performed on the lower frequency driver.”
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`Ex. 1005, 6:17-18, 7:23-26 (emphasis added). Harvey ‘806 further explained,
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`“[t]he reason for this preference is that the lower frequencies are less susceptible to
`
`separation induced audio degradation (i.e. separation between the driver and the
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`eartip).” Id., 7:27-30. This is why the only example provided in Harvey ‘806 made
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`the sound tube for the low frequency driver longer. Pet., 36 (citing Ex. 1005, 6:55-
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`65, Fig. 3).
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`Thus, Harvey ‘806 did not teach phase correcting signals from two drivers in
`
`a canalphone by making the sound tube for the high driver longer, as claimed by
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`the ‘674 patent. Harvey ‘806 taught the exact opposite, making the sound tube for
`
`the high driver shorter. The fact that some portions of Harvey ‘806, when
`
`discussing driver offsetting, do not always repeat that it is the low driver being
`
`offset with a longer tube does not mean that Harvey ‘806 taught or suggested
`
`offsetting either the low driver or the high driver as Petitioner suggests. The only
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`offsetting taught by Harvey ‘806 is of the low frequency driver, and Harvey ‘806
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`explains why offsetting of the low driver is required. Petitioner’s incorrect
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`interpretation of Harvey ‘806 as teaching or suggesting offsetting either the low
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`driver or the high driver with a longer sound tube expressly contradicts
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`Harvey ‘806’s teaching.
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`Because Harvey ‘806 fails to teach or suggest phase corrected signals as
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`claimed in the ‘674 patent, Petitioner has failed to carry its burden to prove
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`unpatentability on any of the instituted obviousness grounds based on Harvey ‘806
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`as the primary reference.
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`iii. Petitioner Has Not Provided Sufficient Evidence to Show a
`POSA Would Have Been Motivated to Phase Correct
`Signals in a Canalphone As Claimed in the ‘674 Patent
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`While the use of common sense, common wisdom, and common knowledge
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`is permitted in an obviousness analysis, it “cannot be used as a wholesale substitute
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`for reasoned analysis and evidentiary support.” Arendi S.A.R.L. v. Apple Inc., 832
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`F.3d 1355, 1361–63 (Fed. Cir. 2016). Here, the only evidence offered by Petitioner
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`and relied on the Board in the Institution Decision to provide a motivation to
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`modify or combine the prior art to achieve the claimed invention is conclusory
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`“common sense” testimony from Mr. Young.
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`For example, regarding whether there was a motivation to combine
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`Dahlquist’s teachings of loudspeaker offsetting with Saggio’s canalphone having a
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`high driver with a longer sound tube than a low driver, Petitioner merely cites
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`Mr. Young’s statement that, “[a] POSA would be motivated to use Dahlquist’s
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`offset in Saggio’s IEM to improve fidelity.” Pet., 48 (citing Ex. 1003, ¶¶ 179-180).
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`But Petitioner fails to provide any evidence that shows there was a need for
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`improved fidelity in canalphones at the time of invention. Instead, Petitioner
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`merely relies on the assumption that improving fidelity in canalphones would be
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`common sense, without any evidence to support that assumption. Pet., 32-33.
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`The conclusory statements by Mr. Young cited by Petitioner are precisely
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`14
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`the type of evidence that is insufficient to support an allegation that a POSA would
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`have been motivated to do what was not done in the prior art. Arendi, 832. F.3d at
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`1362; Broadcom Corp., 732 F.3d at 1335. Thus, Petitioner has failed to provide the
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`reasoned analysis and evidentiary support required to show that there was a
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`motivation to modify or combine the prior art to achieve the ‘674 patent’s claimed
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`invention.
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`Further still, when discussing the issue of motivation, Petitioner fails to even
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`address the teaching in Harvey ‘806 that physical and performance factors
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`“requir[ed] driver offsetting to be performed on the lower frequency driver.” Ex.
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`1005, 7:23-26. Nowhere does Petitioner address why one of ordinary skill in the art
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`would have been motivated to elongate the high frequency driver's sound tube in a
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`canalphone given Harvey 806’s teachings that extending the sound tube of the low
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`driver was “required.” This failure to address Harvey ‘806’s contrary teaching
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`renders all of Petitioner’s obviousness arguments against the ‘960 patent’s “phase
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`corrected” claims untenable.
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`In its Institution Decision, the Board cites merely one passage in Saggio to
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`support its finding that a person of ordinary skill in the art would have been
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`motivated to phase correct signals from two drivers by extending the length of the
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`high driver tube. However, that single passage in Saggio merely says that the phase
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`relationship between two drivers may be “tuned” by varying the length of the
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`sound tubes. Paper 8 at 25. Saggio does not teach that the phase relationship may
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`be “corrected” as claimed in the ‘674 patent, which includes the express
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`requirement that, “the high audio signal’s arrival to the outside of the canalphone
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`housing [] is closer in time to the low audio signal.” Paper 8 at 13 (citing Ex. 1001,
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`3:1-5). There is no evidence that Saggio’s “tuning” achieved a “closer in time”
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`result as required by the ‘674 patent, or that such a result was motivated by Saggio
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`or any other reference’s teaching.
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`iv.
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`Petitioner Has Not Provided Any Evidence to Show a POSA
`Would Have Had a Reasonable Expectation of Success in
`Phase Correcting Signals in a Canalphone As Claimed in
`the ‘674 Patent
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`On the issue of expectation of success, Petitioner does not provide any
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`evidence at all. Nowhere in the Petition does Petitioner discuss why one of
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`ordinary skill in the art, even if motivated to selectively modify or combine the
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`teachings of the prior art to mirror the claimed invention, would have had a
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`reasonable expectation of success in doing so. This fact alone makes Petitioner’s
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`obviousness arguments insufficient, Broadcom Corp., 732 F.3d at 1335, but a
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`review of the prior art shows why there would in fact not have been an expectation
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`of success to use either a longer sound tube for a high frequency driver or a
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`processor to phase correct two signals in a canalphone.
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`First, Harvey ‘806 expressly taught that to achieve phase correction in
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`canalphones it was “required” that the low driver be offset with a longer sound
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`tube. Thus, in light of Harvey ‘806, there was no expectation of success in phase
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`correcting signals by making the sound tube for the high driver longer than the
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`sound tube for the low driver.
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`Second, Prakash taught that its processor was typically used in a car stereo, a
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`much larger audio device than the very small size of canalphones. Petitioner
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`provides no reason why a POSA would have expected to be able to fit a large
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`processor appropriate for car stereos into a very small canalphone, and no
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`reference provided by Petitioner does or suggests such. Ex. 1006, 11:28-29.
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`Thus, not only has Petitioner failed to even attempt to show why there would
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`have been an expectation of success, the prior art actually shows there would not
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`have been. As a result, Petitioner has not carried its burden to prove unpatentability
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`on the obviousness grounds.
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`In the Institution Decision, the Board made factual assertions regarding what
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`one of ordinary skill in the art would have recognized without any basis in the
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`record. Paper 8 at 29. For example, the Board makes the factual assertions that, “It
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`is not disputed that delaying the arrival of a signal that has a phase lead will
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`synchronize the leading signal with the lagging signal. There is nothing
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`unpredictable about that scenario.” But no such evidence appears in the record, and
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`it is indeed contradicted by the Board’s finding that merely having one sound tube
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`longer than the other will not necessarily result in phase correction. Paper 8 at 15.
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`Further, Petitioner also fails to provide any evidence showing any of the
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`prior art signals are phase corrected as claimed by the ‘674 patent, such as by
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`providing a phase response graph like that provided by the ‘674 patent in Figure 7.
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`The Board stated in its Institution Decision that, “Figure 7 of the ‘674 patent is
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`merely an example of a phase corrected response,” and “[i]t is not necessary that
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`every phase corrected signal response reflect that which is shown in Figure 7.”
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`Paper 8 at 51. Patent Owner agrees, but that does not mean no showing of phase
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`correction is required in order for the prior art to render the claims of the ‘674
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`patent obvious. There must be some evidence that the prior art, alone or in
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`combination, would have led a person of skill in the art to achieve phase correction
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`as claimed by the ‘674 patent. Petitioner has provided no such evidence and the
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`Board cited none in its Institution Decision. The Board instead assumed phase
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`correction necessarily resulted from the prior art, an assumption that it is
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`Petitioner’s burden to prove with evidence, which it has not.
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`In short, there is no evidence in the record that a person of skill in the art
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`would have expected to be able to phase correct two signals from two drivers of
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`different frequencies in a canalphone by extending the length of the high audio
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`sound tube. Petitioner’s only evidence on the point is pure conjecture and, in fact,
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`contradicted by the prior art.
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`IV. THESE PROCEEDINGS ARE UNCONSTITUTIONAL
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`Once a patent is granted, it “is not subject to be revoked or canceled by the
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`president, or any other officer of the Government” because “[i]t has become the
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`property of the patentee, and as such is entitled to the same legal protection as
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`other property.” McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S.
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`606, 608-09 (1898).
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`The Supreme Court recently heard argument in Oil States Energy Servs., v.
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`Greene's Energy Grp., No. 16-712, to decide whether inter partes review, an
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`adversarial process used by the Patent and Trademark Office (PTO) to analyze the
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`validity of existing patents, violates the Constitution by extinguishing private
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`property rights through a non-Article III forum without a jury. Patent Owner
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`disputes the constitutionality of these proceedings pending the outcome of the
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`Supreme Court’s decision in Oil States.
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`V. CONCLUSION
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`For the reasons discussed above, Petitioner has not demonstrated the
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`unpatentability of any challenged claim. Accordingly, Patent Owner requests that
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`the Board issue a final written decision finding patentable all claims challenged.
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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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`Counsel for Patent Owner
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`Date: December 21, 2017
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`CERTIFICATE OF COMPLIANCE
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`In accordance with 37 C.F.R. § 42.24, as amended, the undersigned certifies
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`that this PATENT OWNER RESPONSE complies with the applicable type-
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`volume limitations of 37 CFR §§ 42.24. Exclusive of the portions exempted by 37
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`CFR 42.24, this Patent Owner Preliminary Response contains 4,332 words as
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`counted by the word processing program used for its preparation.
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`Date: December 21, 2017
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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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`Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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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 RESPONSE to be served on counsel for
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`Petitioner by filing through the PTAB – E2E system as well as by electronic mail
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`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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`Counsel for Patent Owner
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`Date: December 21, 2017
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