Trials@uspto.gov
`571-272-7822
`
`
`Paper 73
`Entered: April 2, 2019
`
`
`
`
`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 IPR2017-01092
`Patent 9,197,960 B2
`____________
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`ORDER ON MOTION TO AMEND
`35 U.S.C. § 316(d) and 37 C.F.R § 42.121
`
`
`
`Before BRIAN J. MCNAMARA, JOHN F. HORVATH, and
`AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`

`

`IPR2017-01092
`Patent 9,197,960 B2
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ............................................................................... 1
`A.
`Background ............................................................................... 1
`B.
`Related Matters ......................................................................... 2
`C.
`The ’960 Patent ......................................................................... 3
`D.
`Illustrative Claims ..................................................................... 8
`E.
`Evidence Relied Upon ............................................................... 8
`F.
`Grounds of Unpatentability Instituted for Trial ........................ 9
`ANALYSIS ....................................................................................... 10
`A.
`Claim Construction ................................................................. 11
`B.
`Partial Adverse Judgment ....................................................... 13
`C.
`Cited Art .................................................................................. 14
`1.
`Saggio ........................................................................... 14
`2.
`Harvey ’806 .................................................................. 16
`3.
`Dombrowski .................................................................. 18
`4.
`Knowles TB6 ................................................................ 19
`5.
`Dalhquist ....................................................................... 20
`6.
`LoPresti ......................................................................... 22
`D. Obviousness Based On Saggio ............................................... 23
`1.
`Claims 1, 3–5, and 8: Saggio Alone ............................. 23
`a.
`Claim 1 ............................................................... 23
`b.
`Claim 3 ............................................................... 28
`c.
`Claim 4 ............................................................... 28
`d.
`Claim 5 ............................................................... 29
`e.
`Claim 8 ............................................................... 30
`Claim 2: Saggio and Knowles TB6 .............................. 30
`Claims 6, 7, 9–11, and 13–18: Saggio
`and Dombrowski ........................................................... 32
`
`2.
`3.
`
`ii
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`IPR2017-01092
`Patent 9,197,960 B2
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`
`E.
`F.
`
`a.
`Claim 6 ............................................................... 32
`Claim 7 ............................................................... 36
`b.
`Claim 9 ............................................................... 37
`c.
`Claim 10 ............................................................. 39
`d.
`Claim 11 ............................................................. 39
`e.
`Claim 13 ............................................................. 40
`f.
`Claim 14 ............................................................. 40
`g.
`Claim 15 ............................................................. 41
`h.
`Claim 16 ............................................................. 41
`i.
`Claim 17 ............................................................. 42
`j.
`Claim 18 ............................................................. 43
`k.
`Claims 1–5 and 8: Saggio and Dahlquist ...................... 43
`4.
`Anticipation by Harvey ’806 ................................................... 45
`Obviousness Based On Harvey ’806 ...................................... 48
`1.
`Claim 2: Harvey ’806 and Knowles TB6 ..................... 48
`2.
`Claims 3–5: Harvey ’806 Alone ................................... 49
`a.
`Claim 3 ............................................................... 49
`b.
`Claim 4 ............................................................... 49
`c.
`Claim 5 ............................................................... 50
`Claims 6, 7, 9–11, and 13–18: Harvey ’806 and
`Dombrowski .................................................................. 51
`a.
`Claim 6 ............................................................... 51
`b.
`Claim 7 ............................................................... 52
`c.
`Claim 9 ............................................................... 53
`d.
`Claim 10 ............................................................. 54
`e.
`Claim 11 ............................................................. 54
`f.
`Claim 13 ............................................................. 55
`
`3.
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`iii
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`IPR2017-01092
`Patent 9,197,960 B2
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`
`g.
`Claim 14 ............................................................. 55
`Claim 15 ............................................................. 56
`h.
`Claim 16 ............................................................. 56
`i.
`Claim 17 ............................................................. 57
`j.
`Claim 18 ............................................................. 58
`k.
`G. Obviousness Based on LoPresti and Dombrowski ................. 58
`H.
`Claim 12 .................................................................................. 59
`I.
`Motion to Amend .................................................................... 62
`1.
`Proposed Claims 19–26 ................................................ 63
`2.
`Proposed Amended Claims 27–36 ................................ 69
`Petitioner’s Motion to Exclude ............................................... 72
`J.
`Patent Owner’s Motion to Exclude ......................................... 73
`K.
`III. CONCLUSION ................................................................................. 73
`IV. ORDER .............................................................................................. 74
`
`
`
`
`
`iv
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`IPR2017-01092
`Patent 9,197,960 B2
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`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`1964 Ears, LLC (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1–18 of U.S. Patent No. 9,197,960 (Ex. 1001, “the
`’960 patent”). Paper 1 (“Pet.”). Jerry Harvey Audio Holding, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
` On October 3, 2017, we instituted an inter partes review of claims 1–
`11 and 13–18 on several grounds of unpatentability. Paper 8 (“Inst. Dec.”),
`2. Patent Owner then filed a Patent Owner Response (Paper 19, “PO
`Resp.”) and Petitioner filed a Reply (Paper 21, “Pet. Reply”).
`Following the Supreme Court’s decision in SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018), we modified the Institution Decision to include
`review of all claims on all grounds presented in the Petition. See Paper 42.
`Petitioner then requested, and was granted, adverse judgment with respect to
`certain references and claims. See Paper 51. Patent Owner filed a
`Supplemental Response (Paper 56, “Supp. Resp.”) regarding the added
`claims, Petitioner filed a Supplemental Reply (Paper 57, “Supp. Reply”),
`and Patent Owner filed a Supplemental Sur-Reply (Paper 62, “Supp Sur-
`Reply”).
`Patent Owner has also filed a Contingent Motion to Amend (Paper 20,
`“Mot. to Amend”), Petitioner filed an Opposition (Paper 22, “Mot. to
`Amend Opp.”), Patent Owner filed a Reply (Paper 30, “Mot. to Amend
`Reply”), and Petitioner filed a Sur-Reply (Paper 32, “Mot. to Amend Sur-
`Reply”).
`Patent Owner also filed a Motion for Observations (Paper 34), and
`Petitioner filed a Response (Paper 40).
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`1
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`Patent 9,197,960 B2
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`
`Petitioner filed a Motion to Exclude (Paper 36), Patent Owner filed a
`Motion to Exclude (Paper 64), and each party filed an Opposition and a
`Reply (Papers 39, 41, 66, 68).
`An oral hearing was held on December 17, 2018, and a transcript of
`the hearing is included in the record. Paper 72 (“Tr.”).
` The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1–11 and 13–18 of the ’960
`patent are unpatentable. We further determine that Petitioner has not shown
`that claim 12 of the ’960 patent is unpatentable.
`
`B.
`
`Related Matters
`Petitioner and Patent Owner identify Jerry Harvey Audio Holding,
`LLC, et al. v. 1964 Ears, LLC (WA) et al., 6:16-cv-00409-CEM-KRS (M.D.
`Fla.), as a related matter involving both parties and the ’960 patent. Pet. 2;
`Paper 5.
`Patent Owner identifies IPR2017-01084, involving Patent No.
`8,567,555 B2, and IPR2017-01091, involving Patent No. 8,925,674 B2, as
`related matters. Paper 5.
`Petitioner identifies Jerry Harvey Audio Holding, LLC et al. v. 1964
`Ears, LLC et al., 6:14-cv-02083-CEM-KRS (M.D. Fla.), involving both
`parties and Patent No. 8,897,463 B2, as a related matter. Pet. 3. Petitioner
`
`2
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`IPR2017-01092
`Patent 9,197,960 B2
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`also identifies as a related matter IPR2016-00494, involving Patent No.
`8,897,463 B2. Id.
`
`C.
`
`The ’960 Patent
`The ’960 patent is titled “Phase Correcting Canalphone System and
`Method.” It describes how there are many different types of personal
`listening devices, such as headphones, earbuds, and canalphones, and that
`canalphones are substantially smaller than a person’s outer ear and differ
`from earbuds in that they are “placed directly in one end of the ear canal.”
`Id. at 1:19–29. According to the patent, both earbuds and canalphones are
`held in position by friction between the ear and the device, rather than by the
`support system found in most headphones. See id. at 1:29–32. The patent
`states that canalphones also may be held in place by retainers that engage a
`portion of a listener’s head. See id. at 1:32–33.
`In an embodiment including what is referred to as “sound bores,” the
`’960 patent discloses a canalphone system having a high frequency sound
`bore, a low frequency sound bore next to the high frequency sound bore, a
`high frequency acoustic driver delivering sound through the high frequency
`sound bore, and a low frequency driver delivering sound through the low
`frequency sound bore. See Ex. 1001, 2:7–23.
`In an embodiment including what is referred to as “sound-tubes,” the
`’960 patent discloses a canalphone system having a high frequency audio
`driver, a low frequency audio driver adjacent to the high frequency audio
`driver, and an acoustical-timer “to phase correct a high audio signal from the
`high audio driver directed to the outside of the canalphone housing with
`delivery of a low audio signal from the low audio driver directed to the
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`IPR2017-01092
`Patent 9,197,960 B2
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`outside of the canalphone housing.” Id. at 2:47–55. As the ’960 patent
`explains:
`The acoustical-timer further includes a low audio sound-tube to
`carry a low audio signal from the low audio driver to outside of
`the canalphone housing, and a high audio sound-tube to carry a
`high audio signal from the high audio driver to the outside of the
`canalphone housing, the high audio sound-tube phase corrected
`with respect to the low audio sound-tube by sizing it to be longer
`than the low audio sound-tube. The low audio sound-tube may
`be sized based upon its time response for the low audio signal to
`pass through the low audio sound-tube.
`The high audio sound-tube may be longer to slow down the high
`audio signal’s arrival to the outside of the canalphone housing so
`that it is closer in time to the low audio signal from the low audio
`driver arrival to the outside of the canalphone housing. The
`arrival of the high audio [signal] to the outside of the canalphone
`housing is less than 0.05 milliseconds difference than the low
`audio signal from the low audio driver arrival to the outside of
`the canalphone housing.
`Id. at 2:56–3:6. The ’960 patent also describes an electronic implementation
`of the “acoustical-timer”:
`The acoustical-timer may include a processor to phase correct a
`high audio signal from the high audio driver to the outside of the
`canalphone housing with delivery of a low audio signal from the
`low audio driver to the outside of the canalphone housing.
`The processor may use digital signal processing to control the
`high audio signal’s arrival at the outside of the canalphone
`housing to be closer in time to the low audio signal from the low
`audio driver’s arrival to the outside of the canalphone housing.
`The arrival of the high audio [signal] to the outside of the
`canalphone housing is less than 0.05 milliseconds difference than
`the low audio signal from the low audio driver arrival to the
`outside of the canalphone housing.
`
`4
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`Patent 9,197,960 B2
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`Id. at 3:13–25. The patent further explains that “[t]he acoustical-timer may
`use a time response for the low audio signal to pass through the canalphone
`housing as a control point to set all other audio signals’ phase in the system.”
`Id. at 3:26–29.
`
`Alternatively, in characterizing its system as a method, the ’960 patent
`describes (1) providing a high audio driver carried by a canalphone housing,
`(2) providing a low audio driver carried by the canalphone housing adjacent
`to the high audio driver, and (3) phase correcting a high audio signal from
`the high audio driver directed to the outside of the canalphone housing with
`delivery of a low audio signal from the low audio driver directed to the
`outside of the canalphone housing. See id. at 3:34–42. For the phase
`correction in the method, the ’960 patent describes two implementations,
`one using a longer sound-tube for the high audio driver than the low audio
`driver, and the other using digital signal processing. See id. at 3:53–4:3. For
`the mechanical implementation, the ’960 patent states:
`The method may further include slowing down the high audio
`signal’s arrival to the outside of the canalphone housing so that
`it is closer in time to the low audio signal from the low audio
`[signal’s] arrival to the outside of the canalphone housing by
`making the high audio sound-tube longer.
`The method may additionally include timing the arrival of the
`high audio signal to the outside of the canalphone housing
`compared to the low audio signal from the low audio [signal’s]
`arrival to the outside of the canalphone housing is within 0.05
`milliseconds of each other.
`Id. at 3:55–65. For the electronic implementation, the ’960 patent states that
`“[t]he method may also include using digital signal processing to phase
`correct a high audio signal from the high audio driver directed to the outside
`of the canalphone housing with delivery of a low audio signal from the low
`
`5
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`

`IPR2017-01092
`Patent 9,197,960 B2
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`audio driver directed to the outside of the canalphone housing.” Id. at 3:65–
`4:3.
`The ’960 patent also refers to computer readable program codes to
`
`provide canalphone phase correction:
`The computer readable program codes may be configured to
`cause the program to provide a high audio driver carried by a
`canalphone housing, and a low audio driver carried by the
`canalphone housing adjacent to the high audio driver. The
`computer readable program codes may also be configured to
`cause the program to phase correct a high audio signal from the
`high audio driver to the outside of the canalphone housing with
`delivery of a low audio signal from the low audio driver to the
`outside of the canalphone housing.
`Id. at 4:25–33.
`
`Figure 6 of the ’960 patent is reproduced below:
`
`
`“Figure 6 is a schematic block diagram of a system in
`accordance with various embodiments.” Ex. 1001, 4:52–53.
`
`6
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`

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`IPR2017-01092
`Patent 9,197,960 B2
`
`The ’960 patent describes that acoustical-timer 17a “and/or” 17b are
`
`provided to phase correct a high audio signal from high audio driver 20
`directed to the outside of canalphone housing 12 with delivery of a low
`audio signal from low audio driver 22 directed to the outside of the
`canalphone housing. See id. at 7:12–17. With respect to acoustical-timer
`17a, the ’960 patent refers to low audio sound-tube 16, which carries a low
`audio signal from low audio driver 22 to the outside of canalphone housing
`12, and high audio sound-tube 14, which carries a high audio signal from
`high audio driver 20 to the outside of canalphone housing 12. See id. at
`7:18–24. The ’960 patent states that phase correction of the high audio with
`respect to the low audio is achieved by sizing high audio sound-tube 14 so
`that it is longer than low audio sound-tube 16. See id. at 7:24–26. The
`patent also states that high audio sound-tube 14 is made longer to slow down
`the high audio signal’s arrival to the outside of the canalphone housing so
`that it is closer in time to the arrival of the low audio signal from the low
`audio driver to the outside of the canalphone housing. See id. at 7:30–34.
`
`The ’960 patent describes that the low frequency sound bore and the
`high frequency sound bore may together form a single unit prior to their
`installation in the canalphone. See id. at 1:45–48; 2:31–34; 5:26–30. This is
`said to “aid[] in the assembly of the canalphone.” Id. at 6:5–6. “Stated
`another way, because the single unit 15 is one piece, the installation of the
`single unit into the canalphone 12 is easier than trying to install the low
`frequency sound bore 16 and the high frequency sound bore 14 as separate
`components.” Id. at 6:6–10.
`
`7
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`

`

`IPR2017-01092
`Patent 9,197,960 B2
`
`D.
`
`Illustrative Claims
`Of the challenged claims, claims 1 and 9 are independent. Claim 1 is
`drawn to an apparatus, and claim 9 is drawn to a method. Claims 1 and 9 are
`reproduced below.
`1. A system comprising:
`a canalphone housing;
`a low audio sound-tube to carry a low audio signal to the
`canalphone housing’s outside; and
`a high audio sound-tube to carry a high audio signal to the
`canalphone housing’s outside, the high audio sound-tube
`phase corrected with respect to the low audio sound-tube
`by sizing it to be longer than the low audio sound-tube,
`and the high audio sound-tube’s length is greater than 3
`millimeters but less than 10 millimeters.
`9. A method comprising:
`combining a low audio sound-tube and a high audio sound-
`tube as a single unit; and
`installing the single unit into a canalphone housing.
`Ex. 1001, 12:26–35; 12:60–63.
`
`Evidence Relied Upon
`Petitioner relies on the following references:
`
`E.
`
`
`
`Exhibit
`Date
`Reference
`U.S. App. 2011/0058702 A1 Mar. 10, 2011 Ex. 1004
`Saggio
`Harvey ’806 U.S. Pat. No. 7,317,806 B2
`Jan. 8, 2008
`Ex. 1005
`Dombrowski U.S. App. 2006/0159298 A1 July 20, 2006 Ex. 1006
`LoPresti
`U.S. App. 2007/0223735 A1 Sept. 27, 2007 Ex. 1007
`
`8
`
`

`

`IPR2017-01092
`Patent 9,197,960 B2
`
`
`Knowles TB6 Effects of Acoustical
`Termination Upon Receiver
`Response, Knowles
`Electronics, Inc., Technical
`Bulletin TB6
`U.S. Pat. No. 3,824,343
`
`Dahlquist
`
`Aug. 16, 2010 Ex. 1008
`
`July 16, 1974 Ex. 1009
`
`Petitioner also relies on declarations of Bob Young, which are
`Exhibits 1003, 1033, and 1047.
`
`F. Grounds of Unpatentability Instituted for Trial
`The following grounds of unpatentability remained at trial:
`
`Reference(s)
`Saggio
`Saggio and Knowles TB6
`Saggio and Dombrowski
`Harvey ’806
`Harvey ’806 and Knowles TB6
`Harvey ’806
`Harvey ’806 and Dombrowski
`Saggio and Dahlquist
`Saggio, Dahlquist, and Knowles TB6
`LoPresti and Dombrowski
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 102
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claim(s) Challenged
`1, 3–5, and 8
`2
`6, 7, 9–11, and 13–18
`1
`2
`1 and 3–5
`6, 7, and 9–18
`1, 3–5 and 8
`2
`9
`
`9
`
`

`

`IPR2017-01092
`Patent 9,197,960 B2
`
`
`II. ANALYSIS
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference.
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). While the elements must be arranged in the same way as is recited in
`the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., there
`is no requirement that the terminology in the anticipatory prior art reference
`and the claim be exactly the same. In re Gleave, 560 F.3d 1331, 1334 (Fed.
`Cir. 2009); In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)). “A
`reference anticipates a claim if it discloses the claimed invention ‘such that a
`skilled artisan could take its teachings in combination with his own
`knowledge of the particular art and be in possession of the invention.’” In
`re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301
`F.2d 929, 936 (CCPA 1962)). Prior art references must be considered
`together with the knowledge of one of ordinary skill in the pertinent art. In
`re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`It also “is proper to take into account not only specific teachings of
`the reference but also the inferences which one skilled in the art would
`reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
`(CCPA 1968). For anticipation, the dispositive question is whether one
`skilled in the art would reasonably understand or infer from a reference that
`every claim element is disclosed in that reference. Eli Lilly v. Los Angeles
`Biomedical Research Institute, 849 F.3d 1073, 1074–1075 (Fed. Cir. 2017).
`The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`One seeking to establish obviousness based on more than one reference also
`must articulate sufficient reasoning with rational underpinning to combine
`the teachings from the references. See KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 418 (2007).
`With regard to the level of ordinary skill in the art, we determine that
`no express finding is necessary because the level of ordinary skill in the art
`in this case is reflected by the prior art applied by Petitioner. See Inst. Dec.
`11; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86,
`91 (CCPA 1978). Neither party disputes that finding.
`
`A.
`
`Claim Construction
`In inter partes reviews filed before November 13, 2018, the Board
`construes claims in an unexpired patent according to their broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016); 83 Fed. Reg. 51,340. Consistent
`with that standard, claim terms are generally given their ordinary and
`customary meaning, as would have been understood by one of ordinary skill
`in the art in the context of the entire disclosure. See In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). There are, however, two
`exceptions to that rule: “1) when a patentee sets out a definition and acts as
`his own lexicographer,” and “2) when the patentee disavows the full scope
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`of a claim term either in the specification or during prosecution.” Thorner v.
`Sony Comp. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`For it to be said that an inventor has acted as his or her own
`lexicographer, the definition must be set forth in the specification with
`reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs
`Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). It is improper to
`add into a claim an extraneous limitation, i.e., one that is added wholly apart
`from any need for the addition. See, e.g., Hoganas AB v. Dresser Indus.,
`Inc., 9 F.3d 948, 950 (Fed. Cir. 1993); E.I. du Pont de Nemours & Co. v.
`Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
`Only terms that are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`In the Institution Decision, we “determine[d] that the phrase ‘the high
`audio sound-tube phase corrected with respect to the low audio sound-tube’
`means ‘correcting the phase of the high audio signal so that the phase
`relationship between the high audio signal and the low audio signal at the
`outside of the canalphone housing is closer to their original phase
`relationship at the time of their generation by their respective drivers.’” Inst.
`Dec. 15.
`Patent Owner does not address the construction of the phase
`correction terms. Petitioner asserts that “[t]echnologically speaking this
`construction is incorrect” because “to a POSA at the time of the alleged
`invention, ‘phase corrected’ meant bringing two signals ‘in phase’ at the
`
`12
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`IPR2017-01092
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`
`crossover frequency, at the point at which they reach the listener’s ear,” but
`that “the inaccuracy did not affect the Board’s overall analysis.” Reply 2–3
`(citing Ex. 1033 ¶ 15).
`Having reviewed Petitioner’s argument and evidence, we retain the
`construction of the phase correction terms in the Institution Decision, as
`repeated above. The fundamental difference appears to be that Petitioner
`wants to “focus[] on . . . what [the] phase relationship is at the point where it
`reaches the listener” (Tr. 70:1–2), but the original construction already
`includes the very similar concept “at the outside of the canalphone housing.”
`For that reason, and because Petitioner does not argue that the change would
`make a difference in the outcome (see Tr. 66:7–13), we maintain the
`construction the parties used in preparation for the trial.
`
`B.
`
`Partial Adverse Judgment
`We initially instituted inter partes review to determine the
`patentability of all of the claims challenged in the Petition except claim 12,
`on a subset of the grounds raised in the Petition. See Inst. Dec. 2. After
`SAS, we modified our Institution Decision to include all of the challenged
`claims based on all of the challenged grounds. See Paper 42, at 3.
`Petitioner then requested partial adverse judgment on anticipation of
`claim 8 by Harvey ’806, obviousness of claims 6, 7, and 9–18 in view of
`Saggio and Dahlquist, and anticipation of claim 9 by Dombrowski. See
`Paper 48, at 3. We granted Petitioner’s request (see Paper 51) and, as a
`consequence, Petitioner has failed to show by a preponderance of evidence
`that (a) claim 8 was anticipated by Harvey ’806, (b) claims 6, 7, and 9–18
`were obvious in view of Saggio and Dahlquist, and (c) claim 9 was
`anticipated by Dombrowski.
`
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`IPR2017-01092
`Patent 9,197,960 B2
`
`C.
`
`Cited Art
`
`Saggio
`1.
`Saggio is directed to “[in]-ear monitors,” which are “also referred to
`as canal phone and stereo earphones.” Ex. 1004 ¶ 3. Saggio explicitly states
`that, in its disclosure, the terms “in-ear monitor,” “IEM,” “canal phone,”
`“earbud,” and “earphone” may be used interchangeably. Id. ¶ 35. Saggio
`further states that it relates in particular “to an in-ear monitor with multiple
`sound bores optimized for a multi-driver configuration.” Id. ¶ 2. Saggio
`discloses a multi-driver in-ear monitor that is coupled to an external audio
`source. See id. ¶ 9. Saggio describes how a circuit receives the electrical
`signal from the external audio source and provides separate input signals to
`the drivers contained within the in-ear monitor. See id. Saggio further
`describes how a plurality of sound delivery tubes acoustically couple the
`audio output from each of the drivers to the acoustic output surface of the in-
`ear monitor. See id.
`
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`IPR2017-01092
`Patent 9,197,960 B2
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`A “prior art” configuration for an in-ear monitor or canalphone is
`
`illustrated in Figure 1 of Saggio, reproduced below:
`
`
`Saggio’s “FIG. 1 illustrates the primary elements of a custom fit
`in-ear monitor according to the prior art.” Ex. 1004 ¶ 13.
`Saggio describes driver 107 as a low-frequency driver and driver 109
`as a high-frequency driver, and circuit 111 as receiving input from audio
`source 113 and providing outputs to drivers 107 and 109. See id. ¶ 36.
`Saggio further explains that “[t]he output from drivers 107 and 109 is
`delivered to the end surface 119 of the IEM via a pair of delivery tubes 121
`and 123, respectively.” Id. ¶ 37.
`
`
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`IPR2017-01092
`Patent 9,197,960 B2
`
`
`Harvey ’806
`2.
`Harvey ’806 names Jerry J. Harvey, the sole named inventor on the
`’960 patent, as a coinventor. Harvey ’806 was issued on January 8, 2008,
`more than one year prior to the earliest possible effective filing date that can
`be established by Patent Owner for any challenged claim in the ’960 patent.
`Accordingly, Harvey ’806 is available as § 102(b) art.
`Figure 3 of Harvey ’806 is reproduced below:
`
`
`Harvey ’806’s “FIG. 3 is a cross-sectional view of a generic
`earpiece that includes a pair of sound delivery tubes and a
`predetermined driver offset.” Ex. 1005, 5:6–9.
`Harvey ’806 discloses an earpiece, also known as an in-ear-monitor or
`canalphone, that employs two or more balanced armature drivers that are
`optimized for a particular (e.g., low, medium, or high) frequency range. See
`
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`IPR2017-01092
`Patent 9,197,960 B2
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`Ex. 1005, 1:24–26, 1:59–2:5, 6:5–8. A crossover network or filter divides
`the frequency spectrum of an input signal into multiple regions, i.e., low and
`high components, or low, medium, and high components, and respectively
`provides these components to corresponding armature drivers that are
`optimized for each region. See id. at 2:1–5, 3:48–50. Cross-over network
`111 provides respective low and high frequency components of an input
`signal on line 113 to low frequency armature driver 107 and high frequency
`armature driver 109. See id. at 1:66–2:5, 3:46–50. The frequency response
`of low and high frequency armature drivers 107 and 109 can be respectively
`tuned by dampers 317 and 319. See id. at 5:29–40, 5:61–65. The sounds
`produced by armature drivers 107 and 109 are respectively delivered to the
`ear canal via sound tubes 303 and 305. See id. at 5:6–9. When canalphone
`300 includes more than two armature drivers, the outputs from the two lower
`frequency drivers are merged into a first sound tube, while the output from
`the third higher frequency driver is maintained in a second sound tube. See
`id. at 2:35–40.
`Harvey ’806 explains that the filtering effects of cross-over network
`111, and the relative displacement of armature drivers 107 and 109 within
`housing 213, can introduce an unwanted phase shift between the sounds
`produced by the armature drivers. See id. at 6:12–16, 6:30–36. Harvey ’806
`identifies and refers to the phase shift introduced by frequency dividing
`network, driver roll-off rates, driver bandwidth, and exit plane sound tube
`displacement as “inherent” to earpiece design. See id. at 6:49–52. Harvey
`’806 describes that the inherent phase shift can be minimized by varying the
`lengths of sound tubes 303 and 305, e.g., by extending sound tube 303 by an
`
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`IPR2017-01092
`Patent 9,197,960 B2
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`additional sound tube 321. See id. at 6:37–65. The lengths of sound tubes
`303 and 305 are thus chosen to tune canalphone 300. See id. at 5:58–6:2.
`
`Dombrowski
`3.
`Dombrowski discloses a hearing instrument, such as a hearing aid,
`that can be a behind-the-ear (BTE), in-the-ear (ITE), in-the-canal (ITC), or
`completely-in-the-canal (CIC) device. See Ex. 1006 ¶¶ 1–2, 49, 59. The
`hearing instrument contains at least two receivers having different frequency
`responses, such as a high frequency receiver and a low frequency receiver.
`See i