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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`MED-EL ELEKTROMEDIZINISCHE GERÄTE GES.M.B.H.
`Petitioner
`v.
`
`ADVANCED BIONICS AG
`Patent Owner
`_________________________________
`
`U.S. Patent No. 8,155,746
`“Cochlear Implant Sound Processor with
`Permanently Integrated Replenishable Power Source”
`
`
`
`IPR2020-01016
`__________________________________
`
`
`PETITIONER’S REPLY
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`TABLE OF CONTENTS
`
`I.
`INTRODUCTION. .......................................................................................... 1
`PERSON OF ORDINARY SKILL IN THE ART. ......................................... 2
`II.
`III. CLAIM CONSTRUCTION. ........................................................................... 3
`A.
`Preamble. ............................................................................................... 3
`B.
`“Closed Case” and “Rechargeable Power Source…” ........................... 3
`C.
`The “Power Coil…” Limitation. ........................................................... 6
`IV. APPLICANT ADMITTED PRIOR ART (GROUNDS 1 AND 3) ................. 9
`A.
`The Use of AAPA Under 35 U.S.C. § 311 ........................................... 9
`B.
`The Patents Incorporated by Reference in the AAPA ........................ 10
`V. GROUND 1: CLAIMS 1-24 ARE OBVIOUS OVER THE AAPA
`AND PETERSEN. ......................................................................................... 11
`A.
`Petersen Discloses the “Closed Case” Limitation. .............................. 11
`B.
`Petersen Discloses the “Power Coil…” Limitation. ........................... 14
`C. Motivation to Combine. ...................................................................... 15
`VI. GROUND 2: CLAIMS 10-17 AND 24 ARE OBVIOUS OVER
`ZILBERMAN AND SAASKI. ...................................................................... 21
`A.
`Zilberman Discloses the “Closed Case” Limitation. .......................... 21
`B.
`Zilberman and Saaski Both Disclose the “Power Coil…”
`Limitation. ........................................................................................... 24
`C. Motivation to Combine. ...................................................................... 25
`VII. GROUND 3: CLAIMS 10-17 AND 24 ARE OBVIOUS OVER THE
`AAPA, ZILBERMAN, AND SAASKI. ........................................................ 26
`
`
`
`
`
`
`i
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`Advanced Display Sys., Inc. v. Kent State Univ.,
`212 F.3d 1272 (Fed. Cir. 2000) .....................................................................11
`Barnhart v. Thomas,
`540 U. S. 20 (2003).......................................................................................... 8
`Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) ......................................................................... 3
`Cephalon, Inc. v. Abraxis Bioscience, LLC,
`618 F. App'x 663 (Fed. Cir. 2015) ................................................................... 5
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) ....................................................................... 9
`Daiichi Sankyo Co. v. Apotex, Inc.,
`501 F.3d 1254 (Fed. Cir. 2007) ....................................................................... 2
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .....................................................................20
`Heidelberger Druckmaschinen AG v. Hantscho Com. Prod., Inc.,
`21 F.3d 1068 (Fed. Cir. 1994) ................................................................ 17, 26
`Howmedica Osteonics Corp. v. Zimmer, Inc.,
`640 F.App'x 951 (Fed. Cir. 2016) .................................................................... 3
`IGT v. Bally Gaming Int'l, Inc.,
`659 F.3d 1109 (Fed. Cir. 2011) ....................................................................... 6
`In re Burckel,
`592 F.2d 1175 (CCPA 1979) .........................................................................12
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) .............................................................. 17, 26
`In re Kao,
`639 F.3d 1057 (Fed. Cir. 2011) .....................................................................20
`
`
`
`ii
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`
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`In re Nomiya,
`509 F.2d 566 (CCPA 1975) ............................................................................. 9
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)............................................................................ 1, 15, 18
`Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, Paper 33 (PTAB Jan. 24, 2020) .........................................20
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) .....................................................................4, 9
`MED-EL Elektromedizinische Geräte Ges.m.b.H v. Advanced Bionics
`AG,
`IPR2020-00190, Paper 45 (PTAB June 2, 2021) ..........................................21
`PlaSmart, Inc. v. Kappos,
`482 F.App'x 568 (Fed. Cir. 2012) ..................................................................23
`Red Rhino Leak Detection, Inc. v. Anderson Mfg. Co., Inc.,
`2019 WL 4039972 (D. Minn. Aug. 27, 2019) ................................................. 6
`Samsung Elecs. Am., Inc. v. Prisua Eng'g Corp.,
`948 F.3d 134 (Fed. Cir. 2020) .......................................................................10
`Statutes
`35 U.S.C. § 311(b) ..................................................................................................... 9
`35 U.S.C. § 312(a)(3) ...............................................................................................26
`35 U.S.C. § 315(e) ...................................................................................................10
`Regulations
`37 C.F.R. § 1.57(c) ...................................................................................................10
`37 C.F.R. § 42.104(b)(2) ..........................................................................................26
`37 C.F.R. § 42.24 .....................................................................................................27
`37 C.F.R. § 42.24(c) .................................................................................................27
`
`
`
`
`iii
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`Other Authorities
`August 18, 2020 Memorandum from Andrei Iancu, “Treatment of
`Statements of the Applicant in the Challenged Patent in Inter Partes
`Reviews under § 311” (“Guidance Memo”) ............................................................ 10
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`
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`
`
`iv
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`LIST OF EXHIBITS
`(UPDATED)
`
`Exhibit
`Number
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`
`1019
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`1020
`1021
`1022
`1023
`1024
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`1025
`1026
`1027
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`1028
`1029
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`Exhibit Name
`U.S. Patent No. 8,155,746 to Maltan et al. (“Maltan”)
`Expert Declaration of Khalil Najafi
`Provisional Application No. 60/417,973
`File History of Application No. 10/675,375 (“Parent Application”)
`U.S. Patent 7,349,741
`File History of Application No. 12/040,888
`U.S. Patent 5,603,726 to Schulman et al. (Schulman”)
`U.S. Patent 4,532,930 to Crosby et al. (“Crosby”)
`U.S. Patent 6,272,382 to Faltys et al. (“Faltys”)
`U.S. Patent 6,190,305 to Ball et al. (“Ball”)
`U.S. Patent 5,571,148 to Loeb et al. (“Loeb”)
`U.S. Patent 5,303,305 to Raimo (“Raimo”)
`PCT Application Publication WO 02/41666 A1 (“Gibson”)
`U.S. Patent 5,824,022
`U.S. Patent 6,219,580
`U.S. Patent 6,289,247
`PCT Application Publication WO 97/04619 (“Petersen”)
`U.S. Patent Application Publication 2001/0056291 of Zilberman et
`al. (“Zilberman”)
`Provisional Application No. 60/212,517 of Zilberman et al.
`(“Zilberman Provisional”)
`Assignment of Zilberman et al.
`U.S. Patent No. 6,310,960 to Saaski et al. (“Saaski”)
`Assignment of U.S. Patent No. 6,310,960 to Saaski et al.
`U.S. Patent No. 6,636,768 to Harrison
`Excerpt from Niparko, “Cochlear Implants – Principles and
`Practices” (2000), pages 109-121 (highlighting and handwritten
`notations not part of the original text)
`U.S. Patent 6,358,281 to Berrang et al.
`U.S. Patent 5,814,095 to Müller et al.
`Stephenson et al., Energy Transport through Tissue by Inductive
`Coupling, American Journal of Surgery 114, 87 (1967)
`U.S. Patent 6,129,753
`U.S. Patent No. 5,610,494 to Grosfilley
`
`v
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`Exhibit
`Number
`1030
`1031
`1032
`1033
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`1034
`1035
`1036
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`1037
`1038
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`1039
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`1040
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`1041
`1042
`1043
`1044
`
`Exhibit Name
`U.S. Patent 6,265,100 (“Saaski Parent”)
`Claim Construction Memorandum, D. Del., September 9, 2020
`Claim Construction Order, D. Del., September 9, 2020
`Patent Owner's Infringement Contentions (excluding claim charts)
`(redacted)
`Email Sernel to Sternberg, October 25, 2019
`Parties' Joint Status Report, October 28, 2019
`Declaration of Georg Reitboeck in support of petitioner’s motion
`for pro hac vice admission
`[not used]
`Appellant Qualcomm’s Brief in Qualcomm Inc. v. Apple Inc., Case
`No. 2020-1558, -1550 (Fed. Cir.)
`Appellee Apple's Corrected Responsive Brief in Qualcomm Inc. v.
`Apple Inc., Case No. 2020-1558, -1550 (Fed. Cir.)
`Deposition transcript of Patent Owner’s expert Dr. Darrin Young
`(May 6, 2021)
`U.S. Patent 5,402,496 to Soli et al.
`U.S. Patent 3,989,904 to Rohrer et al.
`U.S. Patent 6,231,604 to von Ilberg
`Excerpts from Counterclaim-Plaintiffs Advanced Bionics, LLC,
`Advanced Bionics AG, and Sonova AG’s [Corrected] Final
`Infringement Contentions in Civil Action No. 18-1530-MN, D.
`Del. (October 9, 2020; redacted)
`
`vi
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`I.
`
`Introduction.
`In its Response, Patent Owner relies on three main arguments.
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`First, Patent Owner asserts that Petersen, Zilberman, and Saaski do not
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`disclose a “closed case.” But under either party’s claim construction, they each do.
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`Second, Patent Owner asserts that Petersen, Zilberman, and Saaski do not
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`meet the “selectively receives power…” language of claim 10. But under the correct
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`construction, they each do. Patent Owner’s flawed claim construction improperly
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`reads a limitation from a preferred embodiment into the claims.
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`Third, Patent Owner asserts that a POSA would not look to hearing aids when
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`working on the power management of cochlear implant sound processors. But
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`Maltan itself “relates to hearing aid prosthesis devices” (Ex. 1001, 1:14-15);
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`Petersen, Zilberman, and Saaski are all analogous prior art; and the evidence shows
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`ample motivation to combine the cochlear implant system of the “Applicant
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`Admitted Prior Art” (“AAPA”) with features of the Petersen hearing aid, and the
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`Zilberman cochlear implant system with features of the Saaski hearing aid.
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`A person of ordinary skill is, after all, “also a person of ordinary creativity,
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`not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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`
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`1
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`
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`II.
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`Person of Ordinary Skill in the Art.
`Patent Owner asserts that including a “working knowledge of power
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`management of biomedical devices” in the definition of a POSA “reflects improper
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`hindsight.” Resp. at 4-6.
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`But the definition of the POSA is necessarily based on the patent and the field
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`of the invention. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed.
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`Cir. 2007) (considering “[t]he art involved in the [patent-in-suit]” and “the problem
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`the invention of the [patent-in-suit] was trying to solve”). Maltan is concerned with
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`the power management of hearing aid prosthesis devices, in particular cochlear
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`implant systems. See Ex. 1002, ¶ 80. Petitioner’s definition of a POSA as having a
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`working knowledge of power management simply accounts for that fact.
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`Patent Owner’s assertion that a POSA has obtained an electrical/biomedical
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`engineering degree and has spent three years developing biomedical devices, but is
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`oblivious as to their power management, makes little sense.
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`The POSA’s educational background already implies knowledge of power
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`management, since “the types of problems encountered with cochlear implant
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`system’s power management… relate to common issues of the electrical engineering
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`and biomedical engineering fields.” Ex. 1002, ¶ 81.
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`And the POSA’s work experience supports the same conclusion: Biomedical
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`devices typically operate on electric power (see, e.g., Ex. 1002, ¶ 42), so developing
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`2
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`such devices logically implies a knowledge of their power management.
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`Petitioner agrees with the Board’s approach that inclusion of “rechargeable
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`batteries, charging through direct electrical contacts, and inductive charging” can be
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`addressed “in the context of the scope and content of the prior art.” I.D., 9-10.
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`III. Claim Construction.
`Preamble.
`A.
`The preamble is not limiting. The body of each Maltan claim describes a
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`structurally complete invention, and deletion of the preamble language does not
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`affect that structure. See Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d
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`801, 808-09 (Fed. Cir. 2002); Howmedica Osteonics Corp. v. Zimmer, Inc., 640
`
`F.App'x 951, 956 (Fed. Cir. 2016) (“medical implant” not limiting).
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`“Closed Case” and “Rechargeable Power Source…”
`B.
`The Board should reject Patent Owner’s attempt to commingle the
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`construction of two separate claim limitations – “an external sound processor
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`including a closed case… [and] a rechargeable power source [or battery]
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`permanently and integrally housed within the closed case.” Resp., 7.
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`In fact, the only claim construction issue which impacts Patent Owner’s
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`substantive arguments (see Resp., 22-26, 44-49) is the temporal aspect of the “closed
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`case” limitation – whether the “closed case” is permanently or currently closed.
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`3
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`
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`The intrinsic evidence does not suggest permanent closure. The claim term
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`itself, in combination with the dictionary definitions of record (Ex. 1006, 298; Ex.
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`3001), does not imply permanent closure – the claim does not say “permanently
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`closed case.” See I.D., 13. And the specification’s description that “mechanical
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`latches or doors” “may be eliminated” does not imply or require a permanently
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`closed case. Ex. 1001, 2:54-57 (emphasis added). E.g., a case that can be opened and
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`closed by screws may not have a latch or door, yet still not be permanently closed.
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`As the Board has pointed out (I.D., 14), dependent claims 6 and 14 and
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`independent claim 24 each expressly recite that the “closed case” “does not include
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`a battery removal door,” which undermines Patent Owner’s construction. See Liebel-
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`Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). The Board
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`should not read that negative limitation into independent claims 1 and 10.
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`The prosecution history also does not support Patent Owner’s position. Patent
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`Owner points to the applicants’ statement that “the phrase ‘permanently and
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`integrally housed within the closed case’ is a structural limitation which requires the
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`rechargeable power source to be necessary for completeness of the sound processor
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`and located within a container, which does not permit passage or entry, in such a
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`manner that one would not expect it to be removable from the container absent
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`destruction of the container.” Resp., 8, citing Ex. 1006, 298-99. That statement is
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`too ambiguous to serve as a definition for either the “closed case” or “rechargeable
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`4
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`power source…” limitation. E.g., if at all read as suggesting permanent closure of
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`the “case,” it conflicts with the structure of claims 1/6, 10/14, and 24 (discussed
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`above), and with the dictionary definitions applicants provided in the very same
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`paper (see Ex. 1006, 298), which do not suggest permanent closure. In light of these
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`inconsistencies, the clarity requirement of the “lexicography exception” is not met,
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`and the ordinary meaning of the claim terms governs. See Cephalon, Inc. v. Abraxis
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`Bioscience, LLC, 618 F. App'x 663, 667 (Fed. Cir. 2015).
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`The Board should therefore adhere to its construction of the “closed case”
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`limitation as “a case that does not currently permit passage or entry.” I.D. 12-15.
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`As for the term “rechargeable power source [or battery] permanently and
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`integrally housed within the closed case,” no construction is necessary, since Patent
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`Owner’s arguments focus on the “closed case” limitation (Resp., 22-26, 44-49).
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`Substantively, the ordinary meaning of “permanently and integrally housed
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`within the closed case” does not suggest that destruction of the case itself should be
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`the touchstone. And as discussed, the prosecution history cannot change the ordinary
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`meaning. If construed at all, the term should be construed as “a rechargeable power
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`source [or battery] integrally housed within the case in such a manner that one would
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`not expect it to be removed in the normal course of use.” See Ex. 1001, 2:8-11 (“the
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`cochlear implant user never has to remove or handle the battery directly”).
`
`
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`5
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`
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`C. The “Power Coil…” Limitation.
`Patent Owner proposes to construe “a power coil… that selectively receives
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`power from an external charging source,” artificially cutting off the full limitation
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`recited in claim 10. But “claim language must be construed in the context of the
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`claim in which it appears.” IGT v. Bally Gaming Int'l, Inc., 659 F.3d 1109, 1117
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`(Fed. Cir. 2011). The Board should construe the entire claim limitation, “a power
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`coil… that selectively receives power from an external charging source and
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`recharges the rechargeable power source when the sound processor is in proximity
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`to the external charging source.”
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`The natural reading of the “selectively” language in its context refers to the
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`characteristic of the power coil of receiving power and recharging the power source
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`only when the sound processor is in proximity to the external charging source, but
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`not to do so when it is not. In other words, the claim emphasizes that proximity is a
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`requirement, not just one circumstance, for power reception and recharging. That is
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`also how the Board understood the claim language in its Institution Decision. I.D.,
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`55; see also Red Rhino Leak Detection, Inc. v. Anderson Mfg. Co., Inc., 2019 WL
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`4039972, at *7-8 (D. Minn. Aug. 27, 2019) (construing “selectively deliver fluid
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`through the inlet” “to mean the capacity of the inlet to ‘deliver, or not deliver, fluid
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`through the inlet…’”).
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`
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`6
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`
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`That understanding is consistent with the specification. The only time the
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`specification uses the recited term “selectively receives” is when it summarizes the
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`sound processor as follows:
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`It is further seen from FIG. 3 and its accompanying description
`that a sound processor 50 made in accordance with the present
`invention includes: … and (5) a coil 56 integrally included within
`the sound processor 50 and coupled to the sound processing
`circuit 52 and replenishable power source 60 through which
`power from an external charging source is selectively received to
`recharge the replenishable power source 60 when the sound
`processor 50 is in proximity to the external charging source.
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`Ex. 1001, 5:62-6:14 (emphasis added). “Selectively” is used in the context of
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`proximity to permit inductive charging. In contrast, the magnetic reed switch that
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`Patent Owner points to is not mentioned at all.
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`Consistent with the natural reading of the claim language and description in
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`the specification, the term “a power coil… that selectively receives power from an
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`external charging source and recharges the rechargeable power source when the
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`sound processor is in proximity to the external charging source” should thus be
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`construed as “a power coil… that receives power from an external charging source
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`and recharges the rechargeable power source only when the sound processor is in
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`proximity to the external charging source, and not when the sound processor is not
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`in proximity to the external charging source.”
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`7
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`
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`Contrary to Patent Owner’s assertion (Resp., 11), the “selectively” term is not
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`superfluous, since it expresses that proximity is a requirement, as discussed above.
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`Furthermore, without the word “selectively,” the phrase “when the sound processor
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`is in proximity to the external charging source” could be reasonably read, under the
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`“last antecedent rule” (see Barnhart v. Thomas, 540 U. S. 20, 26 (2003)), to refer to
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`the recharging function only. Yet, proximity is a key technical requirement for the
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`coil to inductively receive power in the first place. See Ex. 1002, ¶¶ 33-42.
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`Patent Owner proposes the construction “a power coil… that can be enabled
`
`or disabled to receive power from an external charging source.” Resp., 10. That
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`construction finds no support in the intrinsic evidence. Nowhere is the “selectively”
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`language tied to any “enablement” or “disablement” of the power coil.
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`That said, Patent Owner’s construction, as phrased, is met by Petersen,
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`Zilberman, and Saaski. By bringing their respective power coils into proximity of an
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`external charging source, the power coils are enabled to receive power. By bringing
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`them out of proximity, their power coils are disabled to receive power. Patent
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`Owner’s expert admitted these basic technical facts – his only objection was that
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`“the word ‘disable’ is [a] very strong word.” See Ex. 1040, 132:13-133:13, 135:13-
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`136:7; see also Ex. 2014, 65:7-11, 66:14-21.
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`What Patent Owner’s construction does not require is any additional structural
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`component, separate from the power coil, to “enable” or “disable” power reception;
`
`
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`8
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`
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`Patent Owner’s expert testified that he “didn’t provide such an opinion.” Ex. 1040,
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`134:21-135:1. To the extent it is so understood, however, the construction finds no
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`support in the intrinsic evidence. The specification does not tie the magnetic reed
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`switch, on which Patent Owner relies, to the “selectively” language, neither in
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`substance nor context nor location. Compare Ex. 1001, col. 6:12 (“selectively”
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`language) with col. 7:1-6 (first mention of reed switch). Patent Owner simply
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`attempts to read a preferred embodiment into the claims, without any support in the
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`intrinsic evidence. That is improper. See, e.g., Liebel-Flarsheim, 358 F.3d at 913.
`
`IV. APPLICANT ADMITTED PRIOR ART (GROUNDS 1 AND 3)
`A. The Use of AAPA Under 35 U.S.C. § 311
`Patent Owner argues that Petitioner improperly relies on AAPA as a “basis,”
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`and the Board lacks statutory authority to decide Grounds 1 and 3. Resp., 17, 56-57.
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`First, AAPA can be used as a basis for an IPR petition. 35 U.S.C. § 311(b)
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`speaks of “prior art consisting of patents,” not “prior art patents.” AAPA is “prior
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`art.” See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir.
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`1988); In re Nomiya, 509 F.2d 566, 571 (CCPA 1975). That prior art “consists of” a
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`patent, namely the patent at issue. AAPA therefore meets the statutory language.
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`Second, even under the Director’s “Guidance Memorandum,” Petitioner does
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`not use the AAPA as the “basis.” Rather, the substantive focus or “basis” of the
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`Petition is the disclosure of the power management features in Petersen, Zilberman,
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`9
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`
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`and Saaski. Petitioner can and did use AAPA to supply missing claim limitations
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`generally known in the prior art. See Guidance Memorandum, 9.
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`If, however, the Board adheres to its preliminary conclusion that “Petitioner
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`improperly relies on AAPA” (I.D., 41), the Board lacks jurisdiction to consider the
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`merits of Grounds 1 and 3. The “proper course for the Board to follow” would be –
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`much like if the patent was challenged on the basis of a prior sale or indefiniteness
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`– to conclude that it could not reach a final written decision on those Grounds, thus
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`making clear that estoppel under 35 U.S.C. § 315(e) is not triggered. See Samsung
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`Elecs. Am., Inc. v. Prisua Eng'g Corp., 948 F.3d 1342, 1353 (discussing “proper
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`course”) and n. 3 (estoppel does not apply) (Fed. Cir. 2020).
`
`The Patents Incorporated by Reference in the AAPA
`B.
`Patent Owner challenges that Schulman (Ex. 1007), Zilberman ’022 (Ex.
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`1014), Schulman ’580 (Ex. 1015), Faltys ’247 (Ex. 1016), and Kuzma (Ex. 1028)
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`are part of the AAPA. See Resp., 17-19.
`
`The applicants incorporated these patents by reference, following the wording
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`prescribed by 37 C.F.R. § 1.57(c), and introduced them as describing “representative
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`cochlear stimulation systems” and “a representative cochlear electrode array.” Ex.
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`1001, col. 4:17-23. And, the patents are incorporated as part of Maltan’s discussion
`
`of the prior art in its col. 3:47-4:55. They are therefore part of the AAPA – much
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`like material incorporated into a prior art reference. See Advanced Display Sys., Inc.
`
`
`
`10
`
`
`
`
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`v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000).
`
`Patent Owner also asserts that Petitioner “improperly bypasses the
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`obviousness analysis.” Resp., 19. For most AAPA-supported claim limitations,
`
`Maltan itself describes the respective limitation expressly, and citation to the
`
`incorporated patents merely serves to underscore the conventionality of the
`
`respective feature. See Pet., e.g., 24 (“See also”). And for the claims where that is
`
`not the case, claims 5 and 9/16/23, Petitioner did present an obviousness analysis,
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`which Patent Owner left uncontested. See Pet., 35-37, 39-41.
`
`V. Ground 1: Claims 1-24 are Obvious Over the AAPA and Petersen.
`Petersen Discloses the “Closed Case” Limitation.
`A.
`Patent Owner disputes that Petersen discloses a “closed case.” See Resp., 21-
`
`23. But the embodiments of Figures 5 and 7 of Petersen disclose a “closed case”
`
`under either Petitioner’s or Patent Owner’s proposed construction of that term. And
`
`the embodiment of Petersen’s Figure 1 at least meets Petitioner’s construction.
`
`
`
`11
`
`
`
`
`
`
`
`With respect to its Figure 5, Petersen depicts a cross-section of a hearing aid
`
`and describes that “housing 1 in a manner known per se is shaped as a curved box
`
`with generally flat sides, the latter in Figure 5 facing towards and away from the
`
`viewer, respectively.” Ex. 1017, 6:7-10 (emphasis added). Petersen thereby
`
`describes a housing consisting of one piece and enclosing the entire device. See Ex.
`
`1002, ¶ 90. Petersen’s description of a battery that is recharged in situ and connected
`
`to the amplifier by soldered leads supports that understanding. Id. Dr. Young’s only
`
`reason for denying that the Figure 5-device has a “closed case” is that there could be
`
`a door in the flat side. Ex. 1040, 80:15-22. Such unfounded conjecture cannot change
`
`the fair import of Petersen’s description. Prior art must be evaluated for what it
`
`reasonably discloses and suggests to one of ordinary skill in the art. See, e.g., In re
`
`Burckel, 592 F.2d 1175, 1179 (CCPA 1979).
`
`
`
`12
`
`
`
`
`
`
`
`The same is true for the embodiment of Figure 7, “in which the battery 7 is
`
`plate-shaped and cut into shape so as to fit quite accurately the side wall in the
`
`housing facing away from the viewer… In a similar manner, a further battery (not
`
`shown) can be placed close to or constitute a greater or lesser part of the wall (not
`
`shown) in the housing 1 facing towards the viewer.” Ex. 1017, 6:22-29 (emphasis
`
`added). The depiction and description of that embodiment, too, indicates a closed
`
`housing that does not allow access. See Ex. 1002, ¶ 90.
`
`With respect to Figure 1, Patent Owner asserts that the cover 2 “may be
`
`removed to access the interior of the housing.” Resp., 22. But even under that
`
`
`
`
`
`13
`
`
`
`
`
`questionable assumption – Dr. Young’s explanation of how an opening mechanism
`
`would work with the pressure equalization tube 9 sticking out made little sense, see
`
`Ex. 1040, 65:10-69:19 – the Figure 1-embodiment would still meet the correct
`
`construction of “closed case,” since it does not currently permit passage or entry.
`
`Petersen says, after all, that the housing is “closed by a cover 2.” Ex. 1017, 4:1-2.
`
`Even assuming Petersen does not disclose a “closed case,” it would have been
`
`obvious to implement Petersen’s housing as a closed case. See in detail Pet., 27-28;
`
`Ex. 1002, ¶ 91. Patent Owner does not contest that Petersen’s battery is permanently
`
`integrated (and connected to the amplifier by soldered leads) and recharged in situ.
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`See id. When using such a battery, it would have been common sense for a POSA
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`that any opening mechanism can be omitted and the device reduced in size. See id.
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`Patent Owner asserts that there are reasons to still permit entry into the interior of
`
`the housing, such as “allowing the user to replace other components of the sound
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`processor.” Resp., 24. But the mere fact that other technical choices could be made
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`does not change that common sense and the prior art – specifically Grosfilley (Ex.
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`1029) and Zilberman ’022 (Ex. 2014) – provided motivation to close the case. See
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`Ex. 1002, ¶ 91.
`
`Petersen Discloses the “Power Coil…” Limitation.
`B.
`Patent Owner’s argument that Petersen fails to teach the “power coil…”
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`limitation is entirely premised upon its flawed claim construction. See Resp., 26-29.
`
`
`
`14
`
`
`
`
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`Under the correct construction, it is uncontested that Petersen discloses the “power
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`coil…” limitation. See Pet. 30-31, Ex. 1002, ¶¶ 104-105; see also I.D. 43 and 53-56.
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`Moreover, Petersen even meets Patent Owner’s construction. See Section
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`III.C.
`
`C. Motivation to Combine.
`As explained in the Petition, the prior art provided ample motivation for a
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`a)
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`POSA to combine a typical cochlear implant system, as described in the AAPA, with
`
`the power management concepts described in Petersen, and thereby arrive at the
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`claimed invention of Maltan. See Pet., 42-45; Ex. 1002, ¶¶ 147-152; KSR, 550 U.S.
`
`at 418.
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`In particular, Petersen and Saaski both describe the same solutions (charging
`
`through electrical contacts, inductive charging) to the same problems of replacing
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`batteries in external hearing aid components (dexterity problems, danger to children,
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`damaged components) as described in Maltan. Pet., 42-44; Ex. 1002, ¶¶ 148-149.
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`Patent Owner responds that “a POSA would not have applied hearing aid
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`features to a cochlear implant system.” Resp., 33-34.
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`First, Maltan itself shows the close relationship between cochlear implant
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`systems and hearing aids. It describes its invention as in the field of “hearing aid
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`prosthesis devices.” Ex. 1001, 1:14-15. Hearing aids are referred to as “prostheses”
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`in the art (see, e.g., Ex. 1029, Abstract; Ex. 1041, 1:17-20; Ex. 1042, Abstract), and
`
`
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`15
`
`
`
`
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`both Petersen and Saaski describe hearing aid prosthesis devices (see Ex. 1002,
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`¶¶ 62, 73). Maltan further states that “what is needed is a sound processor for use
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`with a cochlear implant system, or other hearing-aid system, that avoids or
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`minimizes the above-problems.” Ex. 1001, 1:49-50.
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`Furthermore, Patent Owner does not contest that cochlear implant sound
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`processors are similar to hearing aids in purpose, size, usage frequency (daily), and
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`user demographics (many elederly users). See Ex. 1002, ¶ 148; Ex. 1001, 1:24-25
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`(“…resembles a hearing aid…”); Ex. 1040, 155:21-24, 156:23-157:1.
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`Some devices even combine electrical stimulation through a cochlear implant
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`with acoustic stimulation using hearing aid concepts. One example of such a device
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`is Zilberman; see Ex. 1018, [0007], [0014]; Ex. 1040, 163:9-19, 165:21-166:7.
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`Another example is U.S. Patent 6,231,604 to von Ilberg; see Ex. 1043, e.g., 5:26-45.
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`All of these facts show that cochlear implant systems and hearing aids are
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`closely related technologies, and a POSA would have recognized that the battery
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`replacement problems described in Petersen and Saaksi equally apply to cochlear
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`implant sound processors, providing motivation to use Petersen and Saaski’s battery
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`charging concepts. See Ex. 1002, ¶ 148-49.
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`Patent Owner argues, however, that a cochlear implant sound processor has
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`“greater power demands” than a hearing aid (which Dr. Young explained is, in this
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`context, the same as “power dissipation,” see Ex. 1040, 166:11-167:4). See Resp.,
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`
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`16
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`33-34, 37-39.
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`Greater power demand in cochlear system sound processors only increases
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`the problems of frequent battery replacement (see Ex. 1040, 167:18-25) and the
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`motivation to use the in situ battery recharging techniques of Petersen. That
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`Petersen’s techniques may have to be adapted to cochlear implant systems, e.g., with
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`respect to “supply voltage” or “component volume” (Resp., 34), does not und
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